Interference No. 104,745
7 USPQ2d 1580, 1582 (Bd. Pat. App. Int. 1988). BBr 100. Laiko responds that the Bai count
alternative should be construed in light of Bai's application because: (1) the Trial Section Merits
Panel, when deciding Laiko's Preliminary Motion 4 seeking judgment against Bai's claim 41 (the
basis for the Bai count alternative) for unpatentability over the Hillenkamp patent, construed the
term "atmospheric-pressure" in light of Bai's specification; (2) Bai's opposition to Laiko's
Preliminary Motion 4 argued that claim 41 should be construed in light of Bai's disclosure; and
(3) Bai has not shown "that Bai's claim 41 is so unambiguous as to obviate any need for
clarification," instead relying on attorney argument. LOppBr 29. As explained below, the terms
at issue have the same meanings whether or not they are construed in light of Bai's specification.
Because both of the terms at issue appear in the preamble of the Bai count alternative, it
is necessary to consider whether and to what extent the preamble is entitled to weight. Griffin v.
Bertina, 285 F.3d 1029, 1033, 62 USPQ2d 1431, 1434 (Fed. Cir. 2002) held:
We conclude that the Board did not err in construing the count to be
limited by the preamble. A preamble to a claim "has the import that the claim as
a whole suggests for it." Bell Communications Research, Inc. v. Vitalink
Communications Corp., 55 F.3d 615, 620, 34 USPQ2d 1816, 1820 (Fed. Cir.
1995). . . . Diagnosis is . . . the essence of this invention; its appearance in the
count gives "life and meaning" to the manipulative steps. See Kropa v. Robie,
38 C.C.P.A. 858, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951) (stating
that a preamble is limiting when it is "necessary to give life, meaning and vitality
to the claims or counts").
Accord, Manning v. Paradis, 296 F.3d 1098, 1103, 63 USPQ2d 1681, 1684 (Fed. Cir. 2002)("we
have recently held, also in the context of an interference dispute, that '[a] preamble to a claim has
the import that the claim as a whole suggests for it.' Griffin v. Bertina, 285 F.3d 1029, 1033,
62 USPQ2d 1431, 1434 (Fed. Cir. 2002) (internal citation omitted)."). See also Allen
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