Appeal No. 2003-1980
Application No. 09/351,868
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.”).
In this instance, the inventor has chosen to, and admits
that, these claims are limited by the preamble. The use of the
term “layer” in the body of the claim requires reference to the
preamble to understand the structural relationships involved.
Accordingly, we conclude, based upon the facts of this claim, that
claim 1 is limited by its preamble.
Likewise, claim 49 accomplishes its method of altering grain
size of a metallic layer by heating a substrate. The metallic
layer is defined as plated upon the substrate in the preamble.
Accordingly, based upon the facts of this claim, we conclude that
the preamble limits claim 49 and requires a metallic layer.
Finally, claim 73 contains similar structural relationships
as claim 1. The body of the claim references the metallic layer,
while the preamble defines that layer as plated on a workpiece
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007