Appeal No. 2005-0902 Page 5
Application No. 09/529,053
depends, see 35 U.S.C. § 112, fourth paragraph, that limitation by implication is not
present in claim 16.
Finally, we conclude that the preamble of claim 16 – “for inhibiting viral replication
in cells susceptible to viral infection” – requires only that the cells contacted with a
leflunomide product are susceptible to viral infection. It does not require that the
contacting be done with the intent of inhibiting viral infection. Rather, the preamble
phrase “for inhibiting viral replication” merely recites the purpose or intended use of the
claimed method and therefore is not a positive limitation. See Pitney Bowes Inc. v.
Hewlett Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165-66 (Fed. Cir.
1999):
If the claim preamble, when read in the context of the entire claim, recites
limitations of the claim, or, if the claim preamble is ‘necessary to give life,
meaning, and vitality’ to the claim, then the claim preamble should be
construed as if in the balance of the claim. . . . If, however, the body of the
claim fully and intrinsically sets forth the complete invention, including all
of its limitations, and the preamble offers no distinct definition of any of the
claimed invention’s limitations, but rather merely states, for example, the
purpose or intended use of the invention, then the preamble is of no
significance to claim construction because it cannot be said to constitute
or explain a claim limitation.
See also Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1376, 58
USPQ2d 1508, 1513 (Fed. Cir. 2001) (Preamble reciting “a method for treating a cancer
patient to effect regression of a taxol-sensitive tumor, said method being associated
with reduced hematologic toxicity” was “only a statement of purpose and intended
result. The expression does not result in a manipulative difference in the steps of the
claim.”).
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