Appeal No. 2002-1143
Application No. 09/085,933
Appellant’s argument in the reply brief that the preamble term
“core” is a positive limitation that breathes live and meaning into
the claims has been considered with respect to the new rejections
entered above. The question of when the introductory words of a
claim, the preamble, constitute an additional structural limitation
of the claim is a matter to be determined by the facts of each case
in view of the claimed invention as a whole. See Corning Glass
Works v. Sumitomo Electric U.S.A., Inc., 868 F.2d 1251, 1257, 9
USPQ2d 1962, 1966 (Fed. Cir. 1989); In re Stencel, 828 F.2d 751,
754, 4 USPQ2d 1071, 1073 (Fed. Cir. 1987); Kropa v. Robie, 187 F.2d
150, 152, 88 USPQ 478, 480-82 (CCPA 1951). In the present case,
the description of the core found at page 4, line 12, through page
5, line 13, of appellant’s specification indicates that the core
may take on any number of suitable forms. Based on this
disclosure, we do not perceive the preamble recitation “core” of
claims 21 and 26 as requiring any particular structural or
functional relationship of the components of the claimed core above
and beyond those found in the body of the claims. Rather, the
portion of the claims following the preamble is a self-contained
description of the appellant’s invention not depending for
completeness upon the introductory clause. Accordingly, it is our
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