Appeal No. 1999-0956
Application No. 08/584,084
preamble is a self-contained description of the structure
not depending for completeness upon the introductory clause.
Kropa v. Robie, 88 USPQ 478 (CCPA 1951). In regard to the
alleged folding about a second fold line recitations, such
limitations on which applicant relies are not stated in the
applied claims. [Answer, page 25.]
It is thus apparent that in rejecting claim 28 as being
anticipated by Labombarde, the examiner has largely disregarded
the preamble recitation of the claim.
Claim 28 is drafted in “the improvement comprising” format,
a claim format expressly provided for in 37 CFR § 1.75(e)(1998).
Paragraph (e) of the rule reads as follows (with emphasis added):
(e) Where the nature of the case admits, as in the
case of an improvement, any independent claim should
contain in the following order:
(1) [a] preamble comprising a general
description of all the elements or steps of
the claimed combination which are
conventional or known,
(2) [a] phrase such as “wherein the
improvement comprises,” and
(3) [t]hose elements, steps[,] and/or
relationships which constitute that portion
of the claimed combination which the
applicant considers as the new or improved
portion.
Hence, by operation of rule, claim 28 is drawn to a combination,
namely, the combination generally recited in the preamble, with
the portion of the claim following the transitional “improvement
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