Appeal No. 1998-3026
Application No. 08/531,613
that an apparatus claim, or a product claim, may contain apparent process limitations
does not render a claim indefinite. Assuming the subject matter of a claim is otherwise
understandable, the inquiry would then turn to determining the patentable weight of the
process limitations when comparing the claim to the prior art. Process steps per se
cannot serve to limit product claims. See In re Stephens, 345 F.2d 1020, 1023, 145
USPQ 656, 658 (CCPA 1965) (“We think it well settled that the presence of process
limitations in product claims, which product does not otherwise patentably distinguish over
the prior art, cannot impart patentability to that product.”). The relevant inquiry is how the
process recitations might define structure. See, e.g., In re Dike, 394 F.2d 584, 589, 157
USPQ 581, 585 (CCPA 1968) (no error in USPTO board holding that term “blow-molded”
in claims drawn to integral plastic container and handle failed to distinguish over prior art,
because term related to process of making the article, and was not definitive as to the
structure of the article).
The principal defect of claim 1 is that it misdescribes the provision or the forming of
the “small holes,” and thus misdescribes the structure of the “small holes” which are “in a
surface” of the synthetic resin of the stator assembly. According to pages 6 through 8 of
the instant specification, yoke 55 and yoke plate 55a are forcibly fitted together by means
of a pressure plate 5 (Fig. 1). Alignment pins 4a, 4b mate with respective alignment
notches 55f (Fig. 2) of yoke plate 55a, and alignment pins 7a, 7b mate with respective
notches 55g (Fig. 3) of yoke 55.
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