Appeal No. 2006-0812
Application No. 09/391,294
(i) The Preamble
The preamble of claim 1 reads as follows:
A support and insulating member for a corner post made of
thin sheet material and used to enclose one corner of an
external wall of a building, the corner post being spaced
from the external wall to define a longitudinally extending
hollow space therebetween, said support and insulating member
comprising:
Generally speaking, the preamble does not limit the claims.
DeGeorge v. Bernier, 768 F.2d 1318, 1322 n.3, 226 USPQ 758, 764
n.3 (Fed. Cir. 1985). However, the preamble may be limiting “when
the claim drafter chooses to use both the preamble and the body to
define the subject matter of the claimed invention.” Bell
Communications Research, Inc. v. Vitalink Communications Corp., 55
F.3d 615, 620, 34 USPQ2d 1816, 1820 (Fed. Cir. 1995). If the
preamble is “necessary to give life, meaning and vitality” to the
claim, then the claim preamble should be construed as limiting.
Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 480-81 (CCPA
1951). This is determined “on the facts of each case in view of
the claimed invention as a whole.” In re Stencel, 828 F.2d 751,
754, 4 USPQ2d 1071, 1073 (Fed. Cir. 1987); see also Applied
Materials, Inc. v. Advanced Semiconductor Materials Am., Inc., 98
F.3d 1563, 1572-73, 40 USPQ2d 1481, 1488 (Fed. Cir. 1996)
(“Whether a preamble stating the purpose and context of the
invention constitutes a limitation . . . is determined on the
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