Ex parte MATSUSHITA et al. - Page 6




              Appeal No. 1998-3026                                                                                       
              Application No. 08/531,613                                                                                 

                     The next steps in manufacture are described in the last paragraph of page 8                         
              through the first paragraph of page 10.  Upper stationary subassembly A and lower                          
              stationary subassembly B are placed in die 8a (Fig. 5) for injection molding using the                     
              claimed “synthetic resin.”  Upper mold half 9 is lowered until it abuts lower mold half 8.                 
                            During this operation, the alignment pins 9c, 9d move into the                               
                     respective notches 55g of the upper stationary subassembly A to accurately                          
                     align the upper and lower stationary subassemblies.                                                 
                            Then, under this condition, molten synthetic resin is injected into the                      
                     mold through the injection port 9a of the upper mold half 9 until all the space                     
                     inside the mold is filled with resin flowing into the inside of the upper and                       
                     lower stationary subassemblies A and B....Fig. 6 is a schematic perspective                         
                     view of a stator assembly 51' taken out of the injection metal mold.  As seen                       
                     from Fig. 6, a pair of small holes 51a, 51a are formed by the alignment pins                        
                     at the locations of the notches in the stator assembly 51'.                                         
              (Specification, page 9, final ¶ through page 10, first ¶.)                                                 
                     Claim 1 is thus at odds with the disclosed process and product thereof.  The “small                 
              holes” are not “provided” in a surface of the synthetic resin so that alignment pins inserted              
              into the alignment notches exclude synthetic resin from the holes.  Rather, the “small holes”              
              are in place over the alignment notches because the alignment pins displace liquid resin                   
              during the molding steps, and thus prevent resin from forming over the alignment notches                   
              which mate with the respective alignment pins.1                                                            
                     The function of claims is (1) to point out what the invention is in such a way as to                
              distinguish it from the prior art; and (2) to define the scope of protection afforded by the               

                     1In this regard we note that original claim 1, which comprises a portion of the disclosure of the   
              invention, recited that the small holes are “formed by alignment pins in a mold.”                          
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