Appeal No. 2006-0180 Παγε 3
Application No. 10/369,343
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
Claim Interpretation
A central issue in dispute in this appeal is whether the operating room having an
operating table is positively recited in independent claims 1 and 2. The preamble of
each of these claims recites apparatus "for use in an operating room with a structural
ceiling and having an operating table located therein" (emphasis added). If we stopped
reading the claim at this point, we might infer that the operating room is not positively
recited as part of the invention but, rather, is the intended environment of use for the
claimed apparatus. Claims 1 and 2 go on, however, to recite "a set of primary rails
connected to the operating room [or to the ceiling of the operating room]."
The preamble of a claim does not limit the scope of the claim when it merely
states a purpose or intended use of the invention; however, terms appearing in a
preamble may be deemed limitations of a claim when they give meaning to the claim
and properly define the invention. See In re Paulsen, 30 F.3d 1475, 1479, 31 USPQ2d
1671, 1673 (Fed. Cir. 1994). Although no litmus test exists as to what effect should be
accorded to words contained in a preamble, review of a patent application in its entirety
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Last modified: November 3, 2007