Interference No. 105,019
Correa v. Roberts
We recognize that the term "sanitary napkin" appears once more in the body of claim 20
where Roberts is referring to use of the article being claimed. That second recitation does not
change the structure or manner of operation of the claimed article. It reaffirms the intended use
indicated in the preamble, and is only a reference to the article being claimed, adding nothing
further to the pre-existing structural and operational requirements. Contrary to an apparent
suggestion by party Roberts, the cases of Catalina Marketing International, sup and Bell
Communications Research, hic. v. Vitalink Communications Com., 55 F.3d 615, 34 USPQ2d
IS 16 (Fed. Cir. 1995), do not stand for the inflexible proposition that so long as the preamble
term at issue appears at least once in the body of the claim it takes on more than an intended use
significance. As is stated in Catalina Marketing International, 289 F.3d at 808, 62 USPQ2d at
1785: "No litmus test defines when a preamble limits claim scope." Every case depends on its
own facts, e.g., how the reiteration of the same term in the body of the claim affects the structure
and operation of the claimed device. Here, the second appearance of "sanitary napkin" adds no
structural or operational limitation to the claim but reaffirms the intended use first indicated in the
preamble. In Catalina Marketing International, 289 F.3d at 811, 62 USPQ2d at 1787, it was
determined that the phrase at issue in claim 25 contained a process aspect in the claimed system,
i.e., "a coupon dispensing entity must designate a location for a terminal before placing it [the
terminal] at that site (Emphasis added)." Party Roberts has not explained or established any
similar process feature for the claimed "sanitary napkin" beyond simply the intended use for the
article.
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