Appeal No. 96-2897
Application 08/050,315
appellants argue that the functional language excludes
encapsulated benzyl benzoate from the claims (Br., p. 8). We
hold that the functional language of Claim 36 excludes skin-
irritating oils from the compositions appellants claim.
In determining anticipation in this case, the functional
language in the preamble of Claim 36 is essential to
particularly point out the invention and cannot be
disregarded. See Diversitech Corp. v. Century Steps, Inc.,
850 F.2d 675, 677-678,
7 USPQ2d 1315, 1317 (Fed. Cir. 1988), for its reference to the
following instruction:
In re Stencel, 828 F.2d 751, 754-55, 4 USPQ2d 1071, 1073
(Fed. Cir. 1987) states:
Whether a preamble of intended purpose constitutes
a limitation to the claims is, as has long been
established, a matter to be determined on the facts
of each case in view of the claimed invention as a
whole.
. . . .
This purpose, set forth in the [preambles of the]
claims themselves, “is more than a mere statement
of purpose; and that language is essential to
particularly point out the invention defined by
the claims.” In re Bulloch, 604 F.2d 1362, 1365,
203 USPQ 171, 174 (CCPA 1979).
Accordingly, we reverse the examiner’s rejection as based, at
least in part, on an erroneous interpretation of the scope of
the claimed subject matter.
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