Appeal No. 1997-3936
Application No. 08/449,409
"for providing a plurality of substrate bias voltages." The
examiner asserts (Answer, page 7) that such claim language
"can only be seen to be 'intended use' because such clearly
states that the circuit is 'for biasing of the semiconductor
chip substrate.'"
We agree that terms in the preamble which merely set
forth the intended use for an otherwise old method or device
do not differentiate the claimed method or device from those
known to the prior art. See In re Pearson, 494 F.2d 1399,
1403, 181 USPQ 641, 644 (CCPA 1974). However, in deciding
whether such terms are merely intended use, we must "determine
whether the preamble breathes life and meaning into the claim,
and is incorporated by reference because of language appearing
later in the claim, making it a limitation of the claim."
General Electric Co. v. Nintendo Co., 179 F.3d 1350, 1361, 50
USPQ2d 1910, 1918 (Fed. Cir. 1999). In the present case, we
do not agree that the terms are merely intended use. In the
last couple lines of the body of each of claims 1 and 13, the
language of providing a plurality of semiconductor substrate
bias levels is repeated, therefore making it a limitation of
the claim. Since Alvarez fails to disclose providing
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