Appeal No. 2000-1862
Application 08/834,061
thereon, to encompass a rare earth-doped sol-gel glass monolith product that is of any shape and
dimension such that it is capable of assuming any position within the light path of any optical
instrument which has a spectral light source capable of emitting light in the “far UV range,” for
purposes of calibrating that optical instrument by means of a “control value” which corresponds
to at least one spectral feature of the rare-earth dopant that is discernable in the “far UV range.”
We have carefully considered our interpretation of appealed claims 37 and 3, 5 and 7 in
light of appellant’s arguments. We agree with appellant (reply brief, pages 1-3) that, under the
facts of the present case, in view of the claimed invention as a whole, the preamble must be taken
with the body of the claim, and thus gives meaning to the claim to the extent that it characterizes
the shape and dimension of the claimed rare earth-doped sol-gel monolith product which would
permit it to be “capable of assuming a position within the light path of such an optical
instrument” recited in the preamble of the claim, when used as “[a] calibration medium” for that
optical instrument. See Pitney Bowes Inc. v. Hewlett-Packard Co., 182 F.3d 1298,1306,
51 USPQ2d 1161, 1165-66 (Fed. Cir. 1999) (“The preamble statement that the patent claims a
method of or apparatus for ‘producing on a photoreceptor an image of generated shapes made up
of spots’ is not merely a statement describing the inventions intended field of use. Instead, that
statement is intimately meshed with the ensuing language in the claim.”); In re Stencel, 828 F.2d
751, 754-55, 4 USPQ2d 1071, 1073 (Fed. Cir. 1987) (“As a matter of claim draftsmanship,
appellant is not barred from describing the driver in terms of the structure imposed upon it by the
collar having plastically deformable lobes.”).
However, we cannot agree with the argument that the preamble limits the scope of the
claim to rare earth-doped sol-gel monolith products only when in use as “[a] calibration medium”
in “an optical instrument” as specified in appealed claim 37, as such a method or process of use
limitation of a claimed product has no place in a product claim. Cf. In re Wiggins, 397 F.2d 356,
359 n.4, 158 USPQ 199, 201-02 n.4 (CCPA 1968), and cases cited therein (“[A]ppellant’s
discovery of the analgesic properties of ‘O2’ and of a composition containing it could properly be
claimed only as a method or process of using that compound or composition in accordance with
the provisions of 35 U.S.C. 100(b) and 101.”). We do not find that Pitney Bowes, supra, requires
a different result as the claims under consideration there were process claims, not claims to an
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