Appeal No. 1998-0631
Application 07/957,990
the fourth Office Action (Paper No. 20). Because we think
the minor language problems are somewhat indefinite and
because Appellant volunteers to fix them, we sustain the
rejection of claim 135. Since the Examiner must still
examine the claims which were improperly rejected as not
reading on the elected species, Appellant will have adequate
opportunity to amend the claim. Thus, for all the cases
where Appellant volunteers to fix problems in the claims, it
is not necessary to direct the Examiner to accept the
changes as requested by Appellant.
As to the "distinguishing" step, Appellant notes that
there is no requirement to state what element carries out
each step, but that the step is disclosed to be performed by
the terminate-and-stay-resident (TSR) routine in the
specification (p. 23, lines 4-6) (Br27). The Examiner does
not respond.
We agree with Appellant's argument that it is
unnecessary to state what element performs the step in a
method claim. The element that performs the step is
disclosed to be the TSR routine, so there is no enablement
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