Appeal No. 2002-0064
Application No. 09/084,042
Whether a preamble or introductory clause constitutes a
limitation on a claim is a matter to be determined by the facts
of each case in view of the claimed invention as a whole.
Corning Glass Works v. Sumitomo Elect. U.S.A., Inc., 868 F.2d
1251, 1257, 9 USPQ2d 1962, 1966 (Fed. Cir. 1989); In re Stencel,
828 F.2d 751, 754, 4 USPQ2d 1071, 1073 (Fed. Cir. 1987); Kropa v.
Robie, 187 F.2d 150, 152, 88 USPQ 478, 480-81 (CCPA 1951). In
the present case, we agree with appellant’s argument (reply
brief, page 2) to the effect that the preamble recitation
“regenerator” is a limitation on claim 1 that implies a
particular kind of heat exchange device. Here, the specification
makes clear that appellant’s inventive energies are directed to
correcting a perceived problem in the particular field of foil
regenerators for regenerative gas cycle machinery (specification,
page 1)2, and not merely an improvement in the field of heat
exchange devices in general. Bearing this in mind, it is our
view that when claim 1 is read in light of the specification, it
2According to appellant (specification, page 2), prior art
high efficiency foil regenerators for regenerative gas cycle
machinery are hard to make because they were manufactured from a
single large sheet of spiral-wrapped foil, which foil sheet is
difficult to fabricate and handle. Appellant’s regenerator is
said to overcome these problems by providing the layers of the
regenerator matrix as a plurality of separate concentric foil
layers.
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