Appeal No. 2001-0300
Application 08/819,527
uniform. The limitations do not specify anything special about
the pitch. In particular, nothing in these limitations recites
the pitch leaving a gap and nothing precludes the wires in each
turn being placed against a preceding turn. More than one pass
(a multiple-wound coil) is only indirectly recited by "a wire
wound . . . in passes in opposite directions."
Although we find the limitations discussed above to be
inherent in a linear coils, we have a problem with the examiner's
application of Steen. Steen, because it is a toroidal coil, will
necessarily have the wires of each turn spaced further apart at
the outside radius of the coil than at the inside radius. This
means that the pitch is different at the outside radius than the
inside radius; thus, the pitch is not "constant" as claimed,
except perhaps when measured at a fixed diameter. Nevertheless,
we do not decide the case on this basis.
The "wherein" clause here is similar to a "whereby" clause
which indicates that the structure or elements previously
enumerated will necessarily give the result which follows the
term "whereby," in which case no further structural limitations
are implied. See Texas Instruments, Inc. v. United States Int'l
Trade Comm'n, 988 F.2d 1165, 1172, 26 USPQ2d 1018, 1023 (Fed.
Cir. 1993) ("A 'whereby' clause that merely states the result of
the limitations in the claim adds nothing to the patentability or
substance of the claim."). With a linear coil there would be
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