Appeal No. 2002-2063
Application No. 09/635,093
1997); In re Paulsen, 30 F.3d 1475, 1479, 31 USPQ2d 1671, 1674
(Fed. Cir. 1994).
We begin with the preamble. Generally, the preamble does not
limit the claims. DeGeorge v. Bernier, 768 F.2d 1318, 1322 n.3,
226 USPQ 758, 764 n.3 (Fed. Cir. 1985). However, the preamble may
be limiting “when the claim drafter chooses to use both the
preamble and the body to define the subject matter of the claimed
invention.” Bell Communications Research, Inc. v. Vitalink
Communications Corp., 55 F.3d 615, 620, 34 USPQ2d 1816, 1820 (Fed.
Cir. 1995). If the preamble is “necessary to give life, meaning
and vitality” to the claim, then the claim preamble should be
construed as limiting. Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ
478, 480-81 (CCPA 1951). This is determined “on the facts of each
case in view of the claimed invention as a whole.” In re Stencel,
828 F.2d 751, 754, 4 USPQ2d 1071, 1073 (Fed. Cir. 1987); see also
Applied Materials, Inc. v. Advanced Semiconductor Materials Am.,
Inc., 98 F.3d 1563, 1572-73, 40 USPQ2d 1481, 1488 (Fed. Cir. 1996)
(“Whether a preamble stating the purpose and context of the
invention constitutes a limitation . . . is determined on the
facts of each case in light of the overall form of the claim, and
the invention as described in the specification and illuminated in
the prosecution history.”).
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