Appeal No. 2000-0447
Application No. 08/838,685
Appellants are of the opinion that the preamble of claim 1 from
which claims 2 through 9 depend breathes life and meaning into the
claim.
The examiner argues that the term “blood-flow directable
catheter” is ambiguous and as such does not breath life into the
meaning of the claim in terms of a structural limitation. The
examiner further states that even if this term in the preamble does
breath life and meaning into the claims, the structural limitations
of a flow directed catheter as defined by appellants are taught by
Gore.
We note at the outset that the question of whether a preamble
constitutes a limitation to a claim is a matter to be determined by
the facts of each case in view of the claimed invention as a whole.
See In re Stencel, 828 F.2d 751, 754, 4 USPQ2d 1071, 1073 (Fed.
Cir. 1987). The preamble of a claim does not limit the scope of
the claim when it merely states intended use of the invention. In
re Pearson, 494 F.2d 1399, 1403, 181 USPQ 641, 644 (CCPA 1974).
However, terms in a preamble are construed as limitations when they
give life and meaning to the invention claimed. Gerber Garment
Technology, Inc. v. Lectra Syst., Inc., 916 F.2d 683, 688, 16
USPQ2d 1436, 1441 (Fed. Cir. 1990)(quoting) Perkins-Elmer Corp. v.
Computervision Corp., 732 F.2d 888, 896, 221 USPQ 669, 675 (Fed.
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