Appeal No. 1998-0212 Page 19
Reissue Application No. 07/837,588
claim 37 in Jepson format (as claim 85) produces a
substantially different claim.
“Although a preamble is impliedly admitted to be prior
art when a Jepson claim is used, ... the claimed invention
consists of the preamble in combination with the improvement,
see Manual of Patent Examining Procedure § 608.01(m) (5th ed.,
July 1983).” Pentec, Inc. v. Graphic Controls Corp., 776 F.2d
309, 315, 227 USPQ 766, 770 (Fed. Cir. 1985) (internal
citations omitted). Accord M.P.E.P. § 608.01(m) (7th ed.,
July 1998) (“The preamble of this form of claim is considered
to positively and clearly include all the elements or steps
recited therein as a part of the combination.”); Donald S. 2
Chisum, Chisum on Patents § 8.06[1][d] (1999) (“With Jepson-
style improvement claims, it is clear that the preamble is a
limitation.”); Light v. Hauss, 200 USPQ 638 (Bd. Pat. App. &
Int. 1978) (interpreting the preamble of a count written in
2Based on such an interpretation, the examiner concludes
that, in a restriction requirement, claim 85 would have been
grouped with claim 37 and the other nonelected claims, which
were drawn to a laundry machine. (Examiner’s Answer at 7.)
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