Appeal No. 1999-2725 Page 4
Application No. 08/763,087
comprising the steps of.” This is followed in the body of the claim by the recitation of a
number of steps, none of which can be catagorized, in our view, as a separate method.
The specification makes clear exactly what problem the invention solves, the method it
utilizes to solve the problem, and what is encompassed by each of the steps. We do not
share the examiner’s view that claims 1 and 11 would be indefinite to one of ordinary skill
in the art.
The second issue raised by the examiner is that it is unclear how the method of
determining the size of a tool is pertinent, since all of the tools of the same size are marked
with the same indicia. It is clear from the specification that the step of “determining a
correct fit,” as it is stated in claim 1, means determining which size wrench fits the nut or
bolt on the workpiece for, once having done so, others of the selected tools of the same
size can quickly be gathered by way of the matching indicia for that particular size. This
step is not indefinite. The same can be said of the “comparing” step of claim 11.
The final issue is with regard to the limitation in claims 5, 10 and 15 that the indicia
“is describable in verbal terms.” This is explained on page 9 of the specification. It does
not mean that the wrenches “talk” to the user of the method, as the examiner has alluded,
but that the indicia are elements that can verbally be described, such as the “blue plaid”
example given in the specification. Indefiniteness does not exist here.
The rejection under 35 U.S.C. § 112, second paragraph, is not sustained.
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