Appeal No. 2006-0728 Page 3
Application No. 10/198,714
“If, however, the body of the claim fully and intrinsically sets forth the complete
invention, including all of its limitations, and the preamble offers no distinct definition of
any of the claimed invention’s limitations, but rather merely states, for example, the
purpose or intended use of the invention, then the preamble is of no significance to
claim construction because it cannot be said to constitute or explain a claim limitation.”
Pitney Bowes Inc. v. Hewlett Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161,
1165-66 (Fed. Cir. 1999).
In this case, we conclude that the preamble of claim 1 does not constitute a claim
limitation. The claims at issue here are similar to those at issue in Bristol-Myers Squibb
Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 58 USPQ2d 1508 (Fed. Cir. 2001). The
claims in Bristol were directed to methods “for reducing hematologic toxicity” and “for
treating a cancer patient to effect regression of a taxol-sensitive tumor, said method
being associated with reduced hematologic toxicity.” See id. at 1375,1376
58 USPQ2d at 1513.
The court concluded that both preambles were non-limiting, because the
preambles did not change the way the claimed processes were performed. See id.:
With respect to the claims directed to a method “for reducing hematologic toxicity, the
court concluded that “[t]he steps of the . . . method are performed in the same way
regardless of whether or not the patient experiences a reduction in hematologic toxicity,
and the language of the claim itself strongly suggests the independence of the preamble
from the body of the claim.”
With respect to the claims directed to a method “for treating a cancer patient to
effect regression of a taxol-sensitive tumor, said method being associated with reduced
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