Appeal No. 2005-2606 Παγε 4
Application No. 10/077,718
The examiner is of the opinion, however, that an object could be positioned
between the concave surfaces of the arm 13 and upright 10 (answer at page 3) and
that the language of claim 22 directed to a clamping arm relates to the intended use
only and thus cannot serve to patentably distinguish the claimed invention over the prior
art (final rejection at page 5).
We do not agree.
The preamble to claim 22 indicates that the invention is a clamping mechanism
for clamping an object. The question of whether a preamble constitutes a limitation to
a claim is a matter to be determined by the facts of each case in view of the claimed
invention as a whole. See In re Stencel, 828 F.2d 751, 754, 4 USPQ2d 1071, 1073
(Fed. Cir. 1987). The preamble of a claim does not limit the scope of the claim when it
merely states intended use of the invention. In re Pearson, 494 F.2d 1399, 1403, 181
USPQ 641, 644 (CCPA 1974). However, terms in a preamble are construed as
limitations when they give life and meaning to the invention claimed. Gerber Garment
Technology, Inc. v. Lectra Syst., Inc., 916 F.2d 683, 688, 16 USPQ2d 1436, 1441 (Fed.
Cir. 1990) (quoting) Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 896,
221 USPQ 669, 675 (Fed. Cir.), cert. denied, 469 U.S. 857(1984). Although no “litmus
test” exist as to what effect should be accorded to terms appearing in a preamble, a
patent application in its entirety should be reviewed to determine whether the inventors
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