Appeal No. 2003-1980
Application No. 09/351,868
The appellants further urge that the claims recite that the
metallic layer is plated on a workpiece that has an insulating
substrate, which is much narrower than any metal undergoing
treatment. (Appeal Brief, page 4, lines 26-30).
We agree with the appellants. We find that the independent
claims, claim 1, 49, and 73, are restricted to a method involving
a metallic layer formed over an insulating substrate. For
example, claim 1 specifically recites that a cleaning and
annealing fluid is applied to a metallic layer and claim 73
specifically references the metallic layer, each in the body of
the claim. Claim 49 references the layer in the preamble and such
reference is necessary to understand the grain size adjustment
which occurs in the metal layer.
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
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