Appeal No. 2001-2397 Page 5
Application No. 08/855,779
“[N]ot unlike a determination of infringement, a determination of
anticipation, as well as obviousness, involves two steps. First is construing the
claim, . . . followed by, in the case of anticipation or obviousness, a comparison
of the construed claim to the prior art.” Key Pharms. Inc. v. Hercon Labs. Corp.,
161 F.3d 709, 714, 48 USPQ2d 1911, 1915 (Fed. Cir. 1998). In this case, the
claims must be construed to determine whether the preamble phrase “personal
care composition” is entitled to any weight.
“[It is a] general principle, as well-settled as any in our patent law
precedent, that a claim preamble has the import that the claim as a whole
suggests for it. In other words, when the claim drafter chooses to use both the
preamble and the body to define the subject matter of the claimed invention, the
invention so defined, and not some other, is the one the patent protects.” Bell
Communications Research Inc. v. Vitalink Communications Corp., 55 F.3d 615,
620, 34 USPQ2d 1816, 1820 (Fed. Cir. 1995). “If the claim preamble, when read
in the context of the entire claim, recites limitations of the claim, or, if the claim
preamble is ‘necessary to give life, meaning, and vitality’ to the claim, then the
claim preamble should be construed as if in the balance of the claim.” Pitney
Bowes Inc. v. Hewlett Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161,
1165-66 (Fed. Cir. 1999).
In this case, we conclude that the preamble phrase “personal care
composition” limits the scope of the claimed compositions, and therefore should
be construed as if in the body of the claim. The body of the claim recites two
components of the claimed composition: a hydrophobically modified
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