Appeal No. 2005-0970 Page 6
Application No. 09/918,760
required to confer meaning on the claim. See Phillips Petroleum
Co. v. Huntsman Polymers Corp., 157 F.3d 866, 872, 48 USPQ2d
1161, 1166 (Fed. Cir. 1998). “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.” Pitney
Bowes Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d
1161, 1165 (Fed. Cir. 1999) (quoting Kropa v. Robie, 187 F.2d
150, 152, 88 USPQ 478, 480-81 (CCPA 1951). “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.” Pitney Bowes, 182
F.3d at 1305, 51 USPQ2d at 1166. All of the elements required to
set forth the appellants’ complete invention are included in the
body of claim 9. Hence, the recitation of “backlash apparatus”
in the preamble does not provide structure needed to completely
define the claimed invention and, therefore, does not serve to
structurally distinguish the claimed invention over Narita which,
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