Appeal No. 2002-2317
Application No. 09/025,607
all of its limitations, and the preamble offers no distinct
definition of any of the claimed invention’s limitations, but
rather merely states, for example, the purpose or intended use of
the invention, then the preamble is of no significance to claim
construction because it cannot be said to constitute or explain a
claim limitation.” Pitney Bowes, 182 F.3d at 1305, 51 USPQ2d at
1166. “The effect preamble language should be given can be
resolved only on review of the entirety of the patent to gain an
understanding of what the inventors actually invented and
intended to encompass by the claim.” Corning Glass Works v.
Sumitomo Electric, 868 F.2d 1251, 1257, 9 USPQ2d 1962, 1966 (Fed.
Cir. 1989). In Corning Glass, the preamble was: “An optical
waveguide”. Corning Glass, 868 F.2d at 1256, 9 USPQ2d at 1965.
The court stated that “contrary to Sumitomo’s argument, the core
and cladding limitations specifically set out in paragraphs (a)
and (b) are not the only limitations of the claim. [citation
omitted] The claim requires, in addition, the particular
structural relationship defined in the specification for the core
and cladding to function as an optical waveguide.” Corning
Glass, 868 F.2d at 1257, 9 USPQ2d at 1966.
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