Appeal No. 2002-2232
Application 09/174,032
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 the present method claim, the preamble sets forth the
context of the operational method steps and the steps reference
the preamble elements. Thus, we conclude that in this instance,
the preamble is limiting. The claimed method is limited to on-
line analysis of location of partial discharge events during
operation of an a.c. power system in which a.c. power is being
applied through a cable to a load.
The examiner does not expressly state whether Rokunohe is
on-line or off-line. The appellants assert that Rokunohe must
be off-line (not on-line, as recited in the preamble of claim
37) because an antenna is needed and discharge signals are input
into the system (Reply Brief, page 3, lines 11-18).
We do not have the benefit of the examiner’s position on
whether Rokunohe is on-line or off-line ab initio or vis-à-vis
the appellants’ argument presented for the first time on appeal.
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