Appeal 2006-2120
Application 09/890,863
Language in a claim preamble, however, acts as a claim limitation
only when such language serves to give meaning to a claim and properly
define the invention, not when the preamble merely states a purpose or
intended use of the invention. See In re Paulsen, 30 F.3d 1475, 1479,
31 USPQ2d 1671, 1673 (Fed. Cir. 1994). “[W]here a patentee defines a
structurally complete invention in the claim body and uses the preamble only
to state a purpose or intended use for the invention, the preamble is not a
claim limitation. [Citations omitted].” Rowe v. Dror, 112 F.3d 473, 478,
42 USPQ2d 1550, 1553 (Fed. Cir. 1997).3 As correctly argued by the
Examiner (Answer 10), the preamble language recited in claim 19 on appeal
refers only to an intended use of the fabric and does not add any positive
structural limitations to the claimed woven fabric. Since the woven fabric of
Weber is easily formed into many protective garments (e.g., see Examples 1
and 2), we determine that it has been established that the woven fabric
taught by Weber would have been capable of performing the function recited
in the preamble of claim 19 on appeal. See In re Schreiber, 128 F.3d 1473,
1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). Accordingly, we
determine that every limitation of claims 19 and 20 is described by Weber
and thus we affirm the rejection of claims 19 and 20 under § 102(b) over
Weber.
Claims 21-24 present a different issue. As correctly argued by
Appellants, these claims positively recite either a diaphragm or a loud-
speaker. As we have construed these claims (see the discussion above
3 We note that Appellants cite the MPEP which states that language in the
preamble “must be evaluated to determine whether the recited purpose or
intended use results in a structural difference” (Br. 8).
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