Appeal 2006-2238
Application 10/168,709
construes the limitation found in claim 1 on appeal that the cross-linked
support matrix when “packed to a chromatographic bed will permit liquid
flow velocities above 5 cm/h, preferably above 50 cm/h, to pass through the
bed for at least 1 hour” as “future intended use language” (Answer 3).
Appellants argue that the Examiner has improperly ignored this claim
limitation (Br. 5-6), and this preamble is necessary to give “meaning and
vitality” to the claim since the claimed flow rates are recognized in the art as
highly desirable, obtaining matrices with these flow characteristics is highly
important, and achievement of these flow rate is a problem in the prior art
(Br. 7).3
Therefore, we must first properly construe this contested claim
limitation. A preamble to a claim does not limit the scope of the claim if it
merely states the invention’s purpose or intended use, but terms appearing in
the preamble may be deemed limitations if they give meaning to the claim
and properly define the invention. See In re Paulsen, 30 F.3d 1475, 1479,
31 USPQ2d 1671, 1673-74 (Fed. Cir. 1994); and In re Stencel, 828 F.2d
751, 754, 4 USPQ2d 1071, 1073 (Fed. Cir. 1987). We agree with the
Examiner (Answer 6) that the contested claim limitation is not necessary to
give meaning to the claim, and is not intertwined with the claim language
from the body of the claim such that the preamble is necessary to give life to
the claim. We agree that the contested limitation refers to an intended use
for the claimed support matrix. Additionally, we note that even if this
3 We note that Appellants do not argue any particular claim with specificity
in regard to this rejection (Br. 4-8). Therefore, in accordance with
37 C.F.R. § 41.37(1)(vii)(2004), we select claim 1 as representative of the
grouped claims and limit our consideration to this claim in deciding this
ground of rejection.
4
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