Appeal No. 96-0419
Application No. 07/928,063
22-23). The additive is present at 0.01-5 parts by weight, preferably, 0.1-2 parts by weight, per 100
parts by weight of the (meth)acrylate monomer (col. 7, lines 1-4).
According to the examiner, the intended functional use of appellant’s composition fails to
differentiate the claimed compositions over the compositions of Miki and Isobe, which only differ in
failing to disclose each claimed compound species and concentration species within their disclosed
compound genus and broader concentration ranges (Answer, pages 4 and 7-8).
Generally, the preamble of a claim does not limit the scope of the claim when it merely recites a
purpose or intended use of the invention, DeGeorge v. Bernier, 768 F.2d 1318, 1322 n.3, 226 USPQ
758, 761 n. 3 (Fed. Cir. 1985), unless it breathes life and meaning into the claim, i.e., is "essential to
point out the invention defined by the claim." Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481
(CCPA 1951). The effect of the preamble language can only be determined by reviewing the entirety
of the appellant’s disclosure to gain an understanding of what the appellant actually invented and
intended to encompass by the claim. See Corning Glass Works v. Sumitomo Elect. U.S.A., Inc.,
868 F.2d 1251, 1257, 9 USPQ2d 1962, 1966 (Fed. Cir. 1989).
Here, the specification makes it clear that appellant’s invention is directed to a composition for
permanent waving of human hair. The specification is not directed to a composition containing any
reducing agent and any copper compound/additive, but to a composition containing a “permanent
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