Appeal No. 2006-1951 Παγε 7
Application No. 10/392,140
understanding of what the inventors actually invented and intended to encompass by
the claim.’” Rowe, 112 F.3d at 478, 42 USPQ2d at 1553 (citing Corning Glass Works v.
Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257, 9 USPQ2d 1962, 1966 (Fed. Cir.
1989)). In addition, we note Manual of Patent Examining Procedure
(MPEP) section 2111.02 (Eigth Ed., Rev. 3, August 2005)2 which
recites that:
The determination of whether a preamble limits a
claim is made on a case-by-case basis in light of
the facts in each case; there is no litmus test
defining when a preamble limits the scope of a
claim. Catalina Mktg. Int ’l v. Coolsavings.com, Inc.,
289 F.3d 801, 808,62 USPQ2d 1781, 1785 (Fed. Cir. 2002).
See id. at 808-10, 62 USPQ2d at 1784-86 for a discussion
of guideposts that have emerged from various decisions
exploring the preamble’s effect on claim scope, as well
as a hypothetical example illustrating these principles.
“[A] claim preamble has the import that the claim as a
whole suggests for it.” Bell Communications Research,
Inc. v. Vitalink Communications Corp., 55_F.3d 615, 620,
34 USPQ2d 1816, 1820 (Fed. Cir. 1995). “If the claim
preamble, when read in the context of the entire claim,
recites limitations of the claim, or, if the claim
preamble is necessary to give life, meaning, and vitality’
to the claim, then the claim preamble should be construed
as if in the balance of the claim.” Pitney Bowes, Inc. v.
Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d
1161, 1165-66 (Fed. Cir. 1999). See also Jansen v.
Rexall
Sundown, Inc., 342 F.3d 1329, 1333, 68 USPQ2d 1154,
1158 (Fed. Cir. 2003) (In considering the effect of
the preamble in a claim directed to a method of treating
or preventing pernicious anemia in humans by administering
2 This section of the MPEP was in effect as of the date the examiner’s answer was mailed.
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