Appeal No. 2005-1134
Application 10/064,583
In order to consider the examiner’s application of the ‘858 patent to the claims, we must
first interpret the language of appealed claim 1, which determination is controlling with respect
to the disposition of this appeal. The plain language of appealed claim 1, styled in product-by-
process format, see generally, In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir.
1985), given the broadest reasonable interpretation in light of the written description of the
specification as it would be interpreted by one of ordinary skill in this art, provides that the
claimed electric motor comprises at least a first component formed from a composite admixture
of permanent magnetic material and a binder kinetically sprayed atop a carrier, wherein the
composite admixture has microstructures of permanent magnet material embedded in the binder
material. Thus, the claim encompasses any electric motor having any component that is formed
from any permanent magnetic material and any binder material therefor which can be kinetically
sprayed to form a composite admixture having the specified microstructure on the top of any
carrier. See In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997);
In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). Accordingly, as
appellants point out and contrary to the examiner’s position, the process limitation of claim 1
must be given weight because such limitations characterize the claimed product.
We agree with appellants that the ‘858 patent does not utilize permanent magnetic
material and a binder therefor which can be kinetically sprayed and thus does not form a
composite admixture having microstructures of such permanent magnet material embedded in
such binder material as specified in claim 1. Thus, as appellants argue, the fact that the claimed
component of the claimed motor may have similar generic properties to the structure prepared
from a paste of material in a polymer binder which is subsequently magnetized, does not alone
constitute evidence that the claimed electric motor and the product of the ‘858 patent are
identical or substantial identical. See, e.g., In re Spada, 911 F.2d 705, 708-09, 15 USPQ2d 1655,
1657-58 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1255-56, 195 USPQ 430, 433-34 (CCPA
1977); In re Skoner, 517 F.2d 947, 950, 186 USPQ 80, 82 (CCPA 1975).
Accordingly, on this record, and the absence of rebuttal evidence by the examiner
establishing that the claimed and prior art products are identical or substantially identical in
response to appellants’ arguments, See generally, Spada, 911 F.2d at 707 n.3, 15 USPQ2d at
1657 n.3; In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re
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