Appeal No. 2006-0673 Page 9
Application No. 09/919,555
matter must be considered, in that situation it may not be entitled to patentable weight."
Gulack, 703 F.2d at 1385, 217 USPQ at 404.
Here, because the data that "comprises instructions for selecting one or more
machine readable algorithms for use by a processor on how to read an array or
machine readable algorithms for use by a processor on how to process data from an
array following reading of the array" do not functionally change the (claimed) memory in
which the data are saved, the data lack a functional relation thereto. Therefore, the
phrase is not entitled to patentable weight.
Second, "[a]n intended use or purpose usually will not limit the scope of the claim
because such statements usually do no more than define a context in which the
invention operates." Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp.,
320 F.3d 1339, 1345, 65 USPQ2d 1961, 1965 (Fed.Cir. 2003). Although "[s]uch
statements often . . . appear in the claim's preamble," In re Stencel, 828 F.2d 751, 754,
4 USPQ2d 1071, 1073 (Fed. Cir. 1987), a statement of intended use or purpose can
appear elsewhere in a claim. Id., 4 USPQ2d at 1073.
Here, because the representative claim recites "[a] method for generating an
addressable array," we agree with the examiner's aforementioned observation that the
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