Appeal No. 1998-0531 Application 08/464,489 invention as a whole. In re Stencel, 828 F.2d 751, 754, 4 USPQ2d 1071, 1073 (Fed. Cir. 1987); Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 480-81 (CCPA 1951). As explained by the Court in Bell Communications Research Inc. v. Vitalink Communications Corp., 55 F.3d 615, 620, 34 USPQ2d 1816, 1820 (Fed. Cir. 1995): . . . [T]he general principle, as well-settled as any in our patent law precedent, [is] that a claim preamble has the import that the claim as a whole suggests for it. In other words, when the claim drafter chooses to use both the preamble and the body to define the subject matter of the claimed invention, the invention so defined, and not some other, is the one the patent protects. In the present instance, we consider that the preamble recitation “for heating a repair site . . . to a substantially uniform temperature of at least about 300EF” must be taken into account, at least insofar as it sets forth a capability for the claimed apparatus. That is, we read claim 28 as requiring that a device which literally meets the terms of the body of the claim must also be at least capable of functioning in the manner called for in the preamble in order to fall within the scope of the claim. Accordingly, the examiner’s position that the preamble recitation in question “[is] not 5Page: Previous 1 2 3 4 5 6 7 8 9 10 11 NextLast modified: November 3, 2007