Interference No. 104,745
. (5) a data processing system that produces a mass spectrum of the analyte." LOppBr. 31. The
presence of the term "generally" makes it clear that this statement is not being offered as a
definition." It is evident from the count language, the relevant dictionary definition, and Bai's
specification that the recited "spectrometer" is not limited to a mass spectrometer that
produces a mass spectrum. Under these circumstances, it would be inappropriate to consider the
parties' extrinsic evidence in the form of expert testimony on this interpretation issue. Cf.
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582, 39 USPQ2d 1573, 1576 (Fed. Cir.
1996) ("In most situations, an analysis of the intrinsic evidence alone will resolve any ambiguity
in a disputed claim term. In such circumstances, it is improper to rely on extrinsic evidence.").
The question of whether production of a mass spectrum nevertheless was necessary to
prove that the atmospheric-pressure ionization device was satisfactory for its intended purpose is
addressed infra in the discussion of Bai's alleged 23 December 1997 actual reduction to practice.
(2) The "atmospheric-pressure" limitation
The fact that the term "atmospheric-pressure" appears in the Bai count alternative only in
its preamble makes it necessary to consult the specification to determine whether that term is
entitled to weight. See Applied Materials, 98 F.3d at 1572-73, 40 USPQ2d at 1488 (“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.”) It is readily apparent
from Bai's specification that the essence of the invention is to use MALDI, which in the prior art
was limited to generating analyte ions in vacuum regions, to instead generate analyte ions in
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