Appeal No. 97-3755
Application 08/079,338
In response to the appellant’s argument that Larsson does not disclose or suggest a “firing
mechanism adapter,” the examiner has also taken the position that the preamble need not be
accorded any weight because the body of the claim does not depend upon the preamble for
completeness (see answer, pages 4 and 5).
We will not support the examiner’s position. The question of whether a preamble or
introductory clause constitutes a limitation to the claim is a matter to be determined by the facts
of each case in view of the claimed invention as a whole. In re Stencel, 828 F.2d 751, 754, 4
USPQ2d 1071, 1073 (Fed. Cir. 1987). Here, the preamble of independent claim 17 sets forth “[a]
firing mechanism adapter for a hammer initiated powder actuated connecting tool, the adapter
comprising” (emphasis ours) and the body of the claim thereafter recites “means for rotatably
connecting the housing [of the adapter] to an end of the connecting tool” (emphasis ours). It is
thus readily apparent that the body of the claim does indeed depend upon the preamble for
completeness and the limitations therein are necessary to give meaning to the claim and properly
define the invention. See Stencel, supra.
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