Ex parte LEAHY et al. - Page 10




          Appeal No. 1999-0944                                                        
          Application No. 08/890,252                                                  


          “onto” as appears in original patent claims 1-3 and throughout              
          the specification are almost mutually exclusive , it appears8                            
          that appellants are using the word “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 the wording of claims 1-3 from inserting                 
          the leading-edge sheath onto the blade subassembly to                       
          inserting the leading-edge sheath in combination with the                   
          blade subassembly only serves to further obscure what                       
          appellants may intend the words “insertion” (claim 1, line 19;              
          claim 3, line 16), “insert” (claim 1, line 27), and “inserted”              
          (claim 2, line 2) 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 apparatus for inserting the                                         
          spread-apart leading-edge sheath in combination with the blade              
          subassembly , and (2) if not, enter a new rejection of reissue              



               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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