Appeal No. 2001-0724
Application No. 09/251,602
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 Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1969) (recitation of
“interbonded one to another by interfusion between the surfaces of the perlite particles”
construed as structural limitation in product claim); 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).
Appellant has not pointed out any structure that may be defined by the implicit
process limitations of forming the motor housing, rotor, stator with coil, shaft means,
and mounting member in a sub-assembly and pre-calibrating the structures. We
therefore find the argument that Shiraki as modified by the teachings of Miller would
require a “total reworking” of Shiraki to be unpersuasive.
Appellant having not presented separate arguments for patentability with respect
to the dependent claims, we sustain the rejection of claims 1, 2, 4, 8, and 9 as being
unpatentable over Shiraki and Miller. See 37 CFR § 1.192(c)(7).
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