Appeal No. 2006-1395 Παγε 4
Application No. 10/687,875
We turn next to the examiner's rejection of claim 19 under 35 U.S.C. § 103 as
being unpatentable over Zills in view of Millis. In support of this rejection, the examiner
states:
Zills teaches a cover having a first piece of material having first and
opposing second edge fastened to form a tubular casing at portion 28 as
shown in Fig. 1, and a second end closed off by a second piece at portion
16 as shown in Fig. 2. Note the edge about portion 28 is partially fastened
to form a slit at portion 26, and fastening means at portion 30. Zills meets
all claimed limitations except for the material being neoprene. Millis
teaches that it is known in the art to make a cover from neoprene material
(col. 3, lines 60). It would have been obvious to one of ordinary skill in the
art to make the cover from neoprene material in Zills as taught by Millis to
provide an alternative material for insulation or other properties [answer at
page 4].
In regard to the recitation in the preamble of claim 19 of a cover for a baseball or
softball bat, the examiner is of the opinion that this language is directed to intended use
only.
We do not agree with the examiner that the language in the preamble of claim 19
regarding a cover for a baseball or softball bat is merely language of intended use.
The question of whether a preamble constitutes a limitation to a claim is a matter
to be determined by the facts of each case in view of the claimed invention as a whole.
See In re Stencel, 828 F.2d 751, 754, 4 USPQ2d 1071, 10 question of 73 (Fed. Cir.
1987). The preamble of a claim does not limit the scope of the claim when it merely
states intended use of the invention. In re Pearson, 494 F.2d 1399, 1403, 181 USPQ
641, 644 (CCPA 1974). However, terms in a preamble are construed as limitations when
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