Ex parte RESCH et al. - Page 4
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Board of Patent Appeals and Interferences > 2001 > Ex parte RESCH et al. - Page 4
Appeal No. 2001-0515
1 gives “life and meaning” to the claim and therefore constitutes a positive limitation that must be
considered in determining the patentability of the claimed subject matter.
The test for determining whether or not the preamble of a claim may be deemed to
be a limitation of the claim is whether the preamble gives “life and meaning” to the claim. See,
Corning Glass Works v. Sumitomo Elec. U.S.A. Inc., 868 F.2d 1251, 1257, 9 USPQ2d
1962, 1966 (Fed. Cir. 1989). See also In re Paulsen, 30 F.3d 1475, 1479, 31 USPQ2d
1671, 1673 (Fed. Cir. 1994) (Terms appearing in a preamble may be deemed limitations of a
claim when they give meaning to the claim and properly define the invention.).
In the present case, the preambular recitation of the prosthetic glenoid component in
claim 1 imports into the claim that the laterally facing concave surface is capable of receiving and
articulating the humerus. Lippincott’s prosthetic component obviously lacks such a capability.
We, therefore, agree with appellants that the preamble of appealed claim 1 gives “life and
meaning” to the claim and thus provides a limitation that cannot be dismissed as a statement of
intended use. For this reason alone, we cannot agree that claims 1, 6 and 7 are anticipated by
Lippincott since the absence from the reference of any element of a claim negates anticipation of
that claim by the reference. See Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565,
1571, 230 USPQ 81, 84 (Fed. Cir. 1986), cert. denied, 479 U.S. 1034 (1987).
With regard to the § 102(b) rejection of claims 1 and 4 based on Rambert, we
agree with the examiner that the projection 21 shown in Figure 1 of the Rambert reference
resembles a keel. However, Rambert discloses that the glenoid component has two of those
projections, not one. See page 13 of the accompanying translation of the Rambert
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Last modified: November 3, 2007