Ex parte KOURTAKIS et al. - Page 7

                Appeal No. 1996-3674                                                                                                      
                Application No. 08/451,826                                                                                                

                        To establish a prima facie case of obviousness, there must be both some suggestion or                             

                motivation to modify the reference or combine reference teachings and a reasonable expectation of                         

                success.  Furthermore, the prior art must teach or suggest all the claim limitations.                                     

                        According to appellants, “none [of Bergna, Abrams or Beck] teach or suggest the process                           

                specifics or starting materials necessary to obtain the property of attrition resistance (as specifically                 

                defined in the Appellants’ specification),” i.e., “a process for producing an attrition resistant catalyst                

                composition made by initially blending one or more specific acidic zeolites and one or more specific                      

                particulate binders” (emphasis in the original, brief, page 7, first full paragraph) and “The Condensed                   

                Chemical Dictionary adds nothing else” (brief, page 13, third paragraph).                                                 

                        Generally, the preamble of a claim does not limit the scope of a 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 appellants’ disclosure to gain an understanding of what the appellants                      

                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).                                           

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