Appeal No. 2003-1844 Page 9
Application No. 09/643,130
machine. Contrary to the examiner's assertions, the introductory phrase of these
claims (i.e., a video casino game machine) must be given weight. The determination of
whether preamble recitations are structural limitations or mere statements of purpose or
use can be resolved only on review of the entirety of the patent application to gain an
understanding of what the appellants actually invented and intended to encompass by
the claim. See Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir.
1997) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951).
Inspection of the entire record in this case reveals that "a video casino game machine"
is, in fact, a structural limitation of the appellants' claims 23, 25, 26 and 28. Thus, we
conclude that the introductory phrase in this instance does not merely state a purpose
or intended use for the claimed structure. Rather, these words give "life and meaning"
and provide further positive limitations to the invention claimed. Furthermore, the
examiner's assertion (answer, p. 4) that Gibson's apparatus for using visual images to
mix sound can be considered to be a video game machine is not germane to the claims
2
at issue since they recite a video casino game machine.
For the reasons set forth above, the decision of the examiner to reject claims 23,
25, 26 and 28 under 35 U.S.C. § 102(b) is reversed.
2 In our view, a person of ordinary skill in the art would understand that not every game is a casino
game and that to the extent Gibson discloses a video game, it would not be considered to be a video
casino game.
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