Interference No. 104,745
Engineering Corp. v. Bartell Industries Inc., 299 F.3d 1336, 1346, 63 USPQ2d 1769, 1774 (Fed.
Cir. 2002):
Generally, the preamble does not limit the claims. DeGeorge v. Bernier, 768 F.2d
1318, 1322 n.3, 226 USPQ 758, 764 n.3 (Fed. Cir. 1985). However, the preamble
may be limiting “when the claim drafter chooses to use both the preamble and the
body to define the subject matter of the claimed invention.” Bell
Communications Research, Inc. v. Vitalink Communications Corp., 55 F.3d 615,
620, 34 USPQ2d 1816, 1820(Fed. Cir. 1995). If the preamble is “necessary to
give life, meaning and vitality” to the claim, then the claim preamble should be
construed as limiting. Kropa v. Robie, 38 C.C.P.A. 858, 187 F.2d 150, 152,
88 USPQ 478, 480-81 (CCPA 1951). This is determined “on the facts of each
case in view of the claimed invention as a whole.” In re Stencel, 828 F.2d 751,
754, 4 USPQ2d 1071, 1073 (Fed. Cir. 1987); see also Applied Materials, Inc. v.
Advanced 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.”).
(1) The recited "spectrometer"
It is evident from the language of both the preamble ("An atmospheric-pressure
ionization apparatus for connection to a spectrometer, comprising:") and paragraph d of the Bai
count alternative ("a passageway for capturing said analyte ions released from said
analyte/matrix mixture and for transporting said analyte ions to said spectrometer") that the
spectrometer is not a structural element of the Bai count alternative, which instead merely
requires that the recited ionization apparatus be capable of forming an operative connection to a
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