Appeal No. 2004-2230
Application No. 09/742,269
I. Whether the Rejections of Claims 1-4 and 6-7 Under 35 U.S.C. § 102 and
Claim 5 under 35 U.S.C. § 103 are proper?
It is our view, after consideration of the record before us, that the disclosure of Grubb
does fully meet the invention as recited in claims 1-4 and 6-7; and that the evidence relied upon
and the level of skill in the particular art would have suggested to one of ordinary skill in the art
the invention as set forth in claim 5. Accordingly, we affirm.
It is axiomatic that anticipation of a claim under § 102 can be found only if the prior art
reference discloses every element of the claim. See In re King, 801 F.2d 1324, 1326, 231
USPQ 136, 138 (Fed. Cir. 1986) and Lindemann Maschinenfabrik GMBH v. American Hoist
& Derrick Co., 730 F.2d 1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984).
With respect to independent claim 1, Appellant argues at pages 8-9 of the brief, “Grubb
et al. do not mention anywhere the remote feeding of an optical amplifier” and “[t]he coupling
device according to the invention of the instant application is remote from the pumping-light
sources.” We do not find these arguments persuasive.
The preamble of Appellant’s claim 1 recites a “configuration for transmitting high-power
pumping light for remotely feeding a fiber amplifier.” We find that the limitation of “for
remotely feeding” is an intended use limitation and does not recite any structural limitation
beyond those found in the body of the claim. If the body of a claim fully and intrinsically sets
forth all of the limitations of the claimed invention, and the preamble merely states, for example,
the purpose or intended use of the invention, rather than any distinct definition of any of the
claimed invention’s limitations, then the preamble is not considered a limitation and is of no
significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298,
1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999).
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