Appeal No. 2002-1575 Page 3
Application No. 08/945,901
(id.), “[u]nder the principles of inherency, if a prior art method, in its normal and
usual operation, would necessarily perform the method claimed, then the method
claimed will be considered to be anticipated by the prior art.”
THE REJECTION UNDER 35 U.S.C. § 102:
A preamble to a claim “has the import that the claim as a whole suggests
for it.” Bell Communications Research, Inc. v. Vitalink Communications Corp.,
55 F.3d 615, 620, 34 USPQ2d 1816, 1820 (Fed. Cir. 1995). We note that a
preamble is limiting when it is necessary to give life, meaning and vitality to the
claims. Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481(CCPA 1951)
(stating that a preamble is limiting when it is “necessary to give life, meaning and
vitality to the claims or counts”). On this record the examiner recognizes (id.),
Mita “does not specifically recite prevention of postoperative astigmatism or
increasing the wound closure strength after corneal incision as claimed in the
instant invention….” In our opinion, the examiner has considered the preamble
as giving meaning and purpose to the manipulative step. Accordingly, we
interpret the phrase “reducing postoperative astigmatism by increasing the
strength of a wound closure site” as a positive limitation in appellants’ claimed
method. Our decision is based on this interpretation.
To make up for the deficiency in Mita, the examiner finds (id.), Mita
inherently meets the requirements of the preamble. According to the examiner
(id.) “[u]nder the principles of inherency, if a prior art method, in its normal and
usual operation, would necessarily perform the method claimed, then the method
claimed will be considered to be anticipated by the prior art.” See e.g., In re
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007