Appeal No. 1998-0531
Application 08/464,489
invention as a whole. In re Stencel, 828 F.2d 751, 754, 4
USPQ2d 1071, 1073 (Fed. Cir. 1987); Kropa v. Robie, 187 F.2d
150, 152, 88 USPQ 478, 480-81 (CCPA 1951). As explained by
the Court in Bell Communications Research Inc. v. Vitalink
Communications Corp., 55 F.3d 615, 620, 34 USPQ2d 1816, 1820
(Fed. Cir. 1995):
. . . [T]he general principle, as well-settled as
any in our patent law precedent, [is] that a claim
preamble has the import that the claim as a whole
suggests for it. In other words, when the claim
drafter chooses to use both the preamble and the
body to define the subject matter of the claimed
invention, the invention so defined, and not some
other, is the one the patent protects.
In the present instance, we consider that the preamble
recitation “for heating a repair site . . . to a substantially
uniform temperature of at least about 300EF” must be taken
into account, at least insofar as it sets forth a capability
for the claimed apparatus. That is, we read claim 28 as
requiring that a device which literally meets the terms of the
body of the claim must also be at least capable of functioning
in the manner called for in the preamble in order to fall
within the scope of the claim. Accordingly, the examiner’s
position that the preamble recitation in question “[is] not
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