Appeal No. 94-3182
Application 07/899,707
.
. . . a recitation with respect to the manner in
which a claimed apparatus is intended to be employed
does not differentiate the claimed apparatus from a
prior art apparatus satisfying the claimed structural
limitations (Ex parte Masham, 2 USPQ2d 1647 [1987]).
It has further been held that the functional “whereby”
statement does not define any structure and accordingly
can not serve to distinguish (In re Mason, 114 USPQ 127,
44 CCPA 937 (1957)).
On the other hand, we are aware of support for a holding that
“adapted to” and “whereby” clauses in claims further limit the
claimed subject matter and should not be disregarded. For
example, see In re Venezia, 530 F.2d 956, 958-59, 189 USPQ
149, 151-52 (CCPA 1976). Pac-Tec Inc. v. Amerace Corp., 903
F.2d 796, 801, 14 USPQ2d 1871, 1876 (Fed Cir. 1990) recognizes
(emphasis added) that:
. . . by deleting the preamble and all limitations
that include “adapted to”, ”whereby”, and “thereby”
. . . the claims are reduced to mere collections
of parts.
Before determining whether appellant’s claims are
unpatentable under 35 U.S.C. § 102(b), examiners must first
ascertain exactly what subject matter is being claimed. See
In re Wilder, 429 F.2d 447, 450, 166 USPQ 545, 548 (CCPA
1970)(“Once having ascertained exactly what subject matter is
being claimed, the next inquiry must be into whether such
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