Appeal No. 1998-3006 Page 6
Application No. 08/586,977
All provisions of the statute must be complied with in
order to obtain a patent. The requirement stated in the
second paragraph of section 112 existed long before the
present statute came into force. Its purpose is to
provide those who would endeavor, in future enterprise,
to approach the area circumscribed by the claims of a
patent, with the adequate notice demanded by due process
of law, so that they may more readily and accurately
determine the boundaries of protection involved and
evaluate the possibility of infringement and dominance.
Compare United Carbon Co. v. Binney Co., 317 U.S. 228, 55
USPQ 381 (1942), Kaiser Industries Corp. v. McLouth Steel
Corp., 400 F.2d 36, 158 USPQ 565 (6th Cir. 1968).
It therefore is evident that the definiteness of a claim is
not only important for a consideration of patentability, but
also for a consideration of infringement.
The preamble of a claim may be a consideration in
determining infringement, as well as the issue of
patentability where the preamble gives life and meaning to the
claim. Thus, the preamble language may not be ignored in5
determining the question of whether a claim is definite under
the second paragraph of § 112. See Ex parte Kristensen, 10
USPQ2d 1701, 1703 (Bd. Pat. App. & Int. 1989).
5 See, e.g., Perkin-Elmer Corp. v. Computervision Corp.,
732 F.2d 888, 221 USPQ 669 (Fed. Cir. 1984).
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