Appeal No. 1999-0936
Application No. 08/890,263
the spread-apart leading-edge sheath in combination with the
blade subassembly” (reissue claim 3, emphasis added).7
Because the commonly accepted dictionary definitions of the
words “inserting” and “onto” as appears in original patent
claim 3 and throughout the specification are almost mutually
exclusive , it appears that appellants are using the word8
“inserting” in a way that does not comport with its plain
meaning. Precisely what that meaning may be, however, is not
apparent from the disclosure. Moreover, changing of the
wording of claim 3 from “inserting . . . onto” to “inserting .
. . in combination with” only serves to further obscure what
appellants may intend the word “inserting” to mean.
Accordingly, the examiner should (1) consider whether one of
ordinary skill in the art can readily and accurately determine
the meaning and scope of the claimed step of “inserting the
Appellants have also changed the wording of the preamble of method7
claim 3 such that the claim in now directed to a method for inserting a
leading-edge sheath in combination with a blade subassembly. Suffice it to
say, our remarks infra also extend to this terminology.
8For example, the verb “insert” may mean “[t]o put or set into,
between, or among,” whereas the preposition “onto” may mean “[o]n top of:
upon.” Webster’s II New Riverside University Dictionary, copyright © 1984 by
Houghton Mifflin Company.
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