Appeal No. 2006-0617
Application 10/209,887
The examiner’s commentary in the answer (page 3) that Wardell discloses each and
every specified structural limitation in the claims, and that since all of the structural
components are met by Wardell, “then Wardell’s detachable handle construction for a
vacuum cleaner does constitute a seatframe having a headrest mounting tube” is without
merit. Essentially, it appears that the examiner has read out the entire preamble of the
claims on appeal and/or dismissed those recitations in the claims as being merely intended
use. In our view, the examiner has improperly failed to accord the full language of
independent claims 1 and 2 appropriate patentable weight.
After considering the entirety of appellants’ disclosure and arguments to gain an
understanding of what the inventors actually invented and intended to encompass by the
appealed claims, we are of the view that the preambular recitations in independent claims 1
and 2 do more than merely state a purpose or intended use of the claimed structure, but
instead serve to provide a definition of the invention and give “life and meaning” to the
claimed subject matter such that it must therefore be considered as a positive limitation in
determining patentability. See Corning Glass Works v. Sumitomo Electric U.S.A. Inc., 868
F.2d 1251, 1257, 9 USPQ2d 1962, 1966 (Fed. Cir. 1989) and Diversitech Corp. v. Century
Steps Inc., 850 F.2d 675, 7 USPQ2d 1315 (Fed. Cir. 1988).
Like appellants, it is incomprehensible to us that one of ordinary skill in the art of
designing and manufacturing seat frames for automotive seats would have viewed Wardell’s
detachable handle for a vacuum cleaner, as it stands, and without modification, as
constituting a seat frame for an automotive seat meeting the terms of the claims on appeal.
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