Appeal No. 2005-0303
Application No. 09/928,884
we find no reason that a single electrical component may not be considered, itself, to be
an electrical “assembly.” The fuse 16 of Natsume may be considered a “fuse
assembly,” i.e., an “electrical assembly.”
With regard to appellants’ argument re no engine controller in Natsume, we are
unpersuaded for two reasons.
First, we agree with the examiner that the mere recitation of an “engine
controller” in the preamble of the claims is only an indication of intended use, not
entitled to patentable weight since this recitation in the preamble fails to give any life or
meaning to the remainder of the claims.
Claim limitations, even in the preamble, are essential if “necessary to give
meaning” to the claims and properly define the invention. In re Fritch, 972 F.2d 1260,
1262, 23 USPQ2d 1780 (Fed. Cir. 1992). In the instant case, there is no connection
recited in the claims between the assembly board/housing/partitioned circuit assembly
and the fact that appellants intend to use this assembly in an engine controller.
Therefore, we find that the recitation of an “engine controller” is not necessary to give
life and meaning to the claims and we do not find such recitation to be essential to the
claimed subject matter.
It is clear that the recitation of an “engine controller” is merely a statement of
appellants’ intended use for the partitioned circuit assembly. Statements of intended
use in a preamble do not distinguish claimed structural apparatus from a reference
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