Appeal 2007-3962
Application 10/005,846
5). In other words, according to the Examiner, the claim is not limited to
what is argued by Appellants.
The issue on appeal arising from the above contentions is: Giving
claim 1 its broadest reasonable interpretation consistent with the
Specification and reading the claim language in light of the Specification as
it would be interpreted by one of ordinary skill in the art, does the preamble
language “improving the mechanical strength” limit the claim in a manner
that patentably distinguishes the method from what is taught by Kondo?
During examination, "claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art." In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827, 1830 (Fed. Cir. 2004).
First, we note that the language “improving the mechanical strength of
a membrane” occurs solely in the preamble of claim 1. Moreover, the body
of the claim contains a self-contained description of the process step, i.e., the
method is simply a method of providing a microporous sheet of a particular
blend composition. The preamble language merely expresses a purpose of
improving strength, the step of providing a microporous sheet comprising a
blend is performed in the same way regardless of whether or not strength is
improved. The language itself strongly suggests the independence of the
preamble from the body of the claim. Our reviewing court and its
predecessors have held that such preamble language is non-limiting. See
Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1373-
374, 58 USPQ2d 1508, 1512 (Fed. Cir. 2001) (holding that the preamble
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