Appeal No. 2002-0701
Application 09/201,269
The examiner argues that the preambles of the appellants’
claims 1-7, 9-18, 27 and 28 (“A printing ink composition”) and
claim 25 (“A printing varnish”) are merely intended use and are
to be given little or no patentable weight because the claims do
not depend on the preamble for completeness (answer, pages 5-6
and 13-14).
The effect preamble language is to be given is determined by
reviewing the entirety of the appellant’s disclosure to gain an
understanding of what the appellant actually invented and
intended to encompass by the claim. See Corning Glass Works v.
Sumitomo Electric, 868 F.2d 1251, 1257, 9 USPQ2d 1962, 1966 (Fed.
Cir. 1989).
The appellant’s specification states that “[t]he present
invention relates to printing ink compositions and methods using
printing inks, especially lithographic printing inks” (page 1,
lines 5-6), “[t]he invention provides a printing ink composition
that includes a branched vinyl resin” (page 6, lines 10-11),
“[t]he invention also provides a method of making an ink
composition with the branched vinyl resin” (page 7, lines 9-10),
“[t]he inks of the invention include a vinyl polymer that is
branched but usefully soluble” (page 8, lines 8-9), and
“[a]lternatively, the compositions of the invention may be used
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