Appeal No. 98-1256
Application No. 08/599,934
Fig. 1 and 28b in the embodiment of Fig. 2) extend from the respective elongated members at a
position intermediate the elongated member's ends and, accordingly, in both embodiments the
"outrigger does not extend from an end of said elongated member" as set forth in independent claim 13.
The appellant also makes much of the fact that the devices of Loggins and Nichols are directed
to drafting instruments and are not "for cutting flooring materials" as set forth in the preamble of the
claims. We must point out, however, that it is well settled that a preamble generally does not limit the
scope of a claim if it merely states the invention's purpose or intended use. See In re Paulsen, 30
F.3d 1475, 1479, 31 USPQ2d 1671, 1673 (Fed. Cir. 1994)). While no litmus test can be given with
respect to when the introductory words of a claim constitute a statement of purpose for a device or are,
in themselves, additional structural limitations of a claim (see Corning Glass Works v. Sumitomo
Electric U.S.A., Inc., 868 F.2d 1251, 1257, 9 USPQ2d 1962, 1966 (Fed. Cir. 1989)), in a case
such as this where elongated member or straight edge 24a or 24b of Loggins clearly has the capability
of guiding a cutter when cutting flooring materials, we are of the opinion that the above-noted
preambular recitation is merely a statement of intended purpose or use which may not be relied on to
distinguish structure from the prior art. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44
USPQ2d 1429, 1431-32 (Fed. Cir. 1997), In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655,
1657 (Fed. Cir. 1990), In re Yanush, 477 F.2d 958, 959, 177 USPQ 705, 706 (CCPA 1973) and
In re Casey, 370 F.2d 576, 580, 152 USPQ 235, 238 (CCPA 1967). Whether the elongated
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