Appeal No. 1997-0397
Application 07/863,900
control circuit," patentably distinguishes claim 66 over the
combination. The "whereby" clause here does not state a result of
the limitations in the claim, as in many "whereby" clauses. There
are at least three reasons for not giving patentable weight to the
present "whereby" clause. First, the "whereby" clause does not
recite a positive limitation because the phrase "may be
preselectively determined" indicates the step is optional. Second,
the "whereby" clause can be considered a "statement of intended use"
because it merely says how the capacitor in the combination is
intended to be selected. Statements of intended use are not
structural limitations that distinguish over the prior art where the
prior art is capable of that use. See In re Pearson, 494 F.2d 1399,
1403, 181 USPQ 641, 644 (CCPA 1974); In re Yanush, 477 F.2d 958, 959,
177 USPQ 705, 706 (CCPA 1973); In re Casey, 370 F.2d 576, 580,
152 USPQ 235, 238 (CCPA 1967). Here, the capacitor in Gerfast is
capable of being selected in the intended manner. Third, the
"whereby" clause states a step by which the final assembly could be
made and, thus, defines a desired process of making the product. The
patentability of product-by-process claims is determined based on the
product itself. See In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964,
966 (Fed. Cir. 1985). Here, the final structure, a motor hardware
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