Appeal No. 2001-1740
Application 08/902,466
an anticipatory reference against these claims, the examiner
takes the position that “[t]he entirety of the [Schofield]
device can be taken to provide a game call structure, capable
of creating sounds sufficient to be heard by game animals”
(answer, page 4). The examiner further explains that
[g]iven the wide variety of game call techniques and
devices for their practice, the examiner cannot deem
the phrase “game call [apparatus]” (which has no
specific structure) to inherently require anything
beyond a sounding mechanism capable of capturing the
attention of a game animal. Examiner believes that
merely a sounding device that is capable of being
heard by a game animal is all that is required. As
stated above, the vacuum device of [Schofield] is
sufficient to provide inherent sounds capable of
being heard by a game animal [answer, page 5].
The preamble of a claim does not limit the scope of the
claim when it merely states a purpose or intended use of the
invention; however, terms appearing in a preamble may be
deemed limitations of a claim when they give meaning to the
claim and properly define the invention. See In re Paulsen,
30 F.3d 1475, 1479, 31 USPQ2d 1671, 1673 (Fed. Cir. 1994).
Although no litmus test exists as to what effect should be
accorded to words contained in a preamble, review of a patent
to the recitation in the preambles of a “game call structure.”
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