Interference No. 105,019
Correa v. Roberts
As is explained by the Federal Circuit in Apple Computer Inc., 234 F.3d at 22, 57
USPQ2d at 1063:
Language in a claim preamble, however, acts as a claim limitation only when such
language serves to "give meaning to a claim and properly define the invention,"
not when the preamble merely states a purpose or intended use of the
invention. hi re Paulsen, 30 F.3d 1475, 1479, 31 USPQ2d 1671, 1673 (Fed. Cir.
1994)(quoting DeGeorize v. Bemier, 768 F.2d 1318, 1322 n.3, 226 USPQ 758,
764 n.3 (Fed. Cir. 1985)). (Emphasis added.)
As is further explained by the Federal Circuit in Catalina Marketing International v.
Coolsavings.com, Inc., 289 F.3d 801, 808, 62 USPQ2d 1781, 1784-85 (Fed. Cir. 2002):
In general, a preamble limits the invention if it recites essential structure or steps,
or if it is "necessary to give life, meaning, and vitality" to the claim. Pitney Bowes,
182 F.3d at 1305. Conversely, a preamble is not limiting "where a patentee
defines a structurally complete invention in the claim body and uses the
preamble only to state a purpose or intended use for the invention." Rowe v.
Dror, 112 F.3d 473, 479, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997). (Emphasis
added.)
Such is the case here. The body of the claim already defines an absorbent core with a backsheet
and a topsheet, which constitutes a pad, usable for absorbing and containing body fluid. The
recitation of "sanitary napkW' in the preamble only further specifies the inventor's purpose or
intended use for the claimed structure. The structure defined in the body of the claim is not
further limited by the recitation of a "sanitary napkin" in the preamble. The circumstance is like
that in Catalina Marketing International, 289 F.3d at 810, 62 USPQ2d at 1786-87. The invention
as defined in the body of the claim has its own life, meaning, and vitality, without regard to the
intended use specified in the preamble, and treating the intended use as a limitation would
effectively impose a method limitation on an apparatus claim without justification.
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