Appeal No. 1996-4124
Application No. 08/307,088
We agree with the Appellant. Our reviewing court has
stated in Bell Communications Research, Inc. v. Vitalink
Communications Corp., 55 F.3d 615, 620, 34 USPQ2d 1816, 1820
(Fed. Cir. 1995) 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 is so defined.
Further, the court has stated that in those cases where the
introductory phrase is essential to point out the invention
defined by the claim, the preamble is given the effect of a
limitation. Id. (Citing Kropa v. Robie,187 F.2d 150, 152, 88
USPQ 478, 480-481 (CCPA 1951)). We find that the preamble of
claim 28 is necessary to define the limitations of the
remainder of the claim. Specifically, the body of claim 28
contains the limitation of "the grinding disc" and we find
that this limitation refers to the preamble description of "a
grinding disc which simultaneously grinds two adjacent tooth
flanks of adjacent teeth of the tooth wheel." Thus, we find
that the scope of claim 28 includes a specific grinding disc
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