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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