Appeal No. 2006-2084
Reexamination Control No. 90/006,360
constitutes a limitation for the purpose of patentability. Such statements often,
although not necessarily, appear in the claims preamble . . . . Whether a preamble
of intended purpose constitutes a limitation to the claims is, as has long been
established, a matter to be determined on the facts of each case in view of the
claimed invention as a whole." (Citations omitted.) In re Stencel, 828 F.2d 751,
754, 4 USPQ2d 1071, 1073 (Fed. Cir. 1987). See also Boehringer Ingelheim
Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345, 65 USPQ2d 1961,
1965 (Fed. Cir. 2003) ("An intended use or purpose usually will not limit the scope
of the claim because such statements usually do no more than define a context in
which the invention operates."); Loctite Corp. v. Ultraseal, Ltd., 781 F.2d 861,
868, 228 USPQ 90, 94 (Fed. Cir. 1985) ("we interpret 'adapted to remain ... metal
surfaces' as merely language of intended use, not a claim limitation"). The bodies
of the claims define the structure of the insert by reference to the tool shank, but do
not require the tool shank to be part of the combination; e.g., "the . . . insert being
receivable within the tool recess of the tool shank," indicates a capability or
intended use, but does not require the tool shank in combination. By comparison,
claim 1 recites "[a] small-shank tool for an automatic lathe, comprising: a tool
- 17 -
Page: Previous 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 Next
Last modified: November 3, 2007