Appeal No. 2006-1395 Παγε 5
Application No. 10/687,875
they give life and meaning to the invention claimed. Gerber Garment Tech., Inc. v. Lectra
Sys., Inc., 916 F.2d 683, 688, 16 USPQ2d 1436, 1441 (Fed. Cir. 1990)(quoting)Perkins-
Elmer Corp. v. Computervision Corp., 732 F.2d 888, 896, 221 USPQ 669, 675 (Fed. Cir.),
cert. denied, 469 U.S. 857(1984). Although no “litmus test” exists as to what effect
should be accorded to terms appearing in a preamble, a patent application in its entirety
should be reviewed to determine whether the inventors intended such language to
represent additional limitations or mere introductory language. See, e.g., In re Paulsen,
30 F.3d 1475, 1479, 31 USPQ2d 1671, 1673-74 (Fed. Cir. 1994)(citing Corning Glass
Works v. Sumitomo Elect. U.S.A., Inc., 868 F.2d 1251, 1257, 9 USPQ2d 1962, 1966
(Fed. Cir. 1989).
In the present case, the entire patent application is directed to a cover for a
baseball or softball bat. In addition, the body of the claim recites elements in relationship
to a baseball or softball bat. In this regard, claim 19 recites (1) the first piece of neoprene
has a first open end for receiving a barrel portion of the bat, (2) a tubular casing adapted
to cover substantially only the barrel portion of the bat and (3) a fastening means for
securing a cover to the barrel portion of the bat. Therefore, in our view, the language in
the preamble of a cover for a baseball or softball bat breathes life and meaning into the
claim and must be considered when determining patentability.
We will not sustain this rejection as we agree with the appellant that the prior art
references applied are not analogous art. The test for non-analogous art is first whether
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