Appeal No. 2006-1150
Application No. 10/317,585
We have reviewed the evidence before us and we conclude that
the examiner has, indeed, established a prima facie case of
anticipation which has not been successfully rebutted by
appellants.
The “continuity checking” aspect of the claimed invention
appears only in the preamble of the claim, with no clear
indication, within the body of the claim, as to how, exactly,
such “continuity checking” is accomplished. Claim limitations,
even in the preamble, are essential if “necessary to give life
and meaning” to the claims and properly define the invention. In
re Fritch, 972 F.2d 1260, 1262, 23 USPQ2d 1780 (Fed. Cir. 1992).
In the instant case, the recitation of “continuity checking”
in the preamble does not give “life and meaning” to the claims
because there is nothing in the body of the claims describing how
such “continuity checking” is achieved. Accordingly, we find
“continuity checking” to be merely an intended use of the claimed
subject matter. Statements of intended use in a preamble do not
distinguish claimed structural apparatus from reference
disclosing the structure but not the intended use. In re Sinex,
309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962).
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