Appeal No. 2005-1953 Page 10
Application No. 09/765,533
In general, a preamble limits the invention if it recites essential structure or
steps, or if it is "necessary to give life, meaning, and vitality" to the claim. Pitney
Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165
(Fed. Cir. 1999). Conversely, a preamble is not limiting "where a patentee defines a
structurally complete invention in the claim body and uses the preamble only to state a
purpose or intended use for the invention." Rowe v. Dror, 112 F.3d 473, 478, 42
USPQ2d 1550, 1553 (Fed. Cir. 1997). Moreover, preambles describing the use of an
invention generally do not limit the claims because the patentability of apparatus or
composition claims depends on the claimed structure, not on the use or purpose of
that structure. In re Gardiner, 171 F.2d 313, 315-16, 80 USPQ 99, 101 (CCPA 1948).
"The inventor of a machine is entitled to the benefit of all the uses to which it can be
put, no matter whether he had conceived the idea of the use or not." Roberts v. Ryer,
91 U.S. 150, 157 (1875).
In the instant case, the term “yoga” includes thousands of postures which can
be performed on the mat. (Specification, page 2). The term “yoga” is not limited to
particular movements or positions, sitting, standing or otherwise, which could alter the
type of indicia or pattern used on the surface of the mat structure. (See the
specification in its entirety). A practitioner can perform a body alignment or yoga
movement based on the indicia or pattern on the mat already recited in the body of the
claims. Thus, the preamble limitation “yoga” does not change the structure of the mat
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