Appeal No. 96-4139
Application 08/142,276
least a base portion, a hollow shaft portion and a tip or
extremity portion all formed of the same material . . ., com-
prising:", and then recites "the base portion", "the hollow shaft
portion", "the tip or extremity portion" and "a protrusion",
together with additional limitations for each of these elements.
While this format is somewhat unusual, we do not consider claim 1
to be indefinite. From his remarks on page 4 of the answer, the
examiner seems to consider the language "having . . . comprising"
in lines 1 to 3 of claim 1 to be the preamble of the claim, but
since line 1 recites a hypodermic needle "having at least a base
portion", etc., we regard the elements recited in lines 1 to 3 as
constituting a part of the claimed combination, with the recita-
tions following "comprising" merely further limiting those
elements. Moreover, even if lines 1 to 3 of claim 1 are
considered to be the preamble, the elements recited therein are
incorporated into the claim by the references to those elements
in the part of the claim following "comprising". See Bell
Communications Research v. Vitalink Communications Corp., 55 F.3d
615, 620, 34 USPQ2d 1816, 1820 (Fed. Cir. 1995).
3
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