Appeal No. 1999-0391
Application 08/225,229
the preamble is not a claim limitation. Rowe v. Dror, 112 F.3d 473, 477, 42 USPQ2d 1550, 1552
(Fed. Cir. 1997).
In the case before us, we are in agreement with the examiner that the preamble of
representative claim 1 on appeal should not be given patentable weight. We find that the body of
claim 1 on appeal defines a structurally complete invention and uses the preamble only to state a
purpose or intended use for the invention. Our close review of claim 1 reveals that the term "beverage
vessel" is only recited once in the preamble of claim 1 on appeal, and does not appear again in the
claim, nor is the term "beverage vessel" in any way tied to other claim limitations or elements in claim 1.
Thus, any reference which meets the structural limitations of the body of claim 1 would anticipate
appellant’s claimed invention, regardless of its purpose or intended use. Here, we find that the coaster
of Ditto anticipates appellant’s representative claim 1.
Even assuming, for the sake of argument, that claim 1 required a "beverage vessel," we
conclude that Ditto still anticipates claim 1 since the coaster shown in Ditto’s Figure 6 is technically a
vessel which is for holding a beverage. Specifically, housing 74 has an upper compartment 78 which
holds a beverage (i.e., liquid in glass 80). In the alternative, housing 74 is capable of holding liquid
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