Appeal No. 2006-2084
Reexamination Control No. 90/006,360
Claims 16-19 recite a tool insert alone
Claims 1-15 are unquestionably directed to a "small-shank tool" having the
combination of a tool shank, a tool insert, and a threaded fastener, i.e., the
complete tool.
We interpret claims 16-19 to be directed to a "tool insert" alone, and not the
combination of a tool insert, a tool shank, and a threaded fastener. It is not
surprising that the claims would claim the insert alone because inserts are sold
separately from shanks. The preambles of independent claims 16-19 recite
"[a] tool insert for a small-shank tool for an automatic lathe, wherein the
small-shank tool includes a tool shank . . ., and the small-shank tool further
includes a threaded fastener for fixedly attaching the tool insert to the tool shank;
said tool insert comprising" (emphasis added). The transition phrase, "said tool
insert comprising" indicates that what is being claimed is the insert alone. The
preamble phrase "for a small-shank tool" is interpreted to be a statement of
intended use, i.e., the tool insert is intended to be used with a tool shank and
fastener, which are not claimed as part of the combination. "There is an extensive
body of precedent on the question of whether a statement of intended use
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