Appeal No. 2002-1002
Application No. 08/820,506
it comprises layers 22, 24 and 26 of different colors. . . .
Cutting the element from the material after it is formed by
needle punching, exposes the intermediate layer 26 as a
peripheral edge stripe.” Id., page 2.
Discussion
1. Rejection of claim 14 under 35 U.S.C. § 102 as
anticipated by McCord.
According to appellant, “[p]atentability in this case is a
question of whether the preamble recitations are mere statements
of intended use or are legitimate limitations.” Id., page 3.
The language of a preamble is considered a claim limitation if it
is “necessary to give life, meaning and vitality” to the claim.
Pitney Bowes v. Hewlett Packard Co., 182 F.3d 1298, 1305, 51
USPQ2d 1161, 1165-66 (Fed. Cir. 1999).
The examiner takes the position that the claim 14 preamble
language is merely a recitation of intended use and does not
recite a structural difference between the claimed invention and
the prior art. Examiner’s answer, page 7, last paragraph. In
general, a statement of intended use or purpose will not limit
the scope of the claim since such statement merely defines the
context in which the invention operates. Rowe v. Dror, 112 F.3d
473, 478, 42 USPQ2d 1550, 1553(Fed. Cir. 1997).
4
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