Appeal No. 2006-2280 Page 8
Application No. 10/244,011
provides a structural limitation to the claimed support or whether it is merely a
recitation of intended use of the claimed support.
“[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 (Fed. Cir. 1999) (quoting Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ
478, 480-81 (CCPA 1951)). “If, however, the body of the claim fully and
intrinsically sets forth the complete invention, including all of its limitations, and
the preamble offers no distinct definition of any of the claimed invention's
limitations, but rather merely states, for example, the purpose or intended use of
the invention, then the preamble is of no significance to claim construction because
it cannot be said to constitute or explain a claim limitation.” Id. The appellant has
made clear that “the crutch and cane shafts [of the preamble] are not part of the
invention, but are rather structures on which the invention is used.” Brief, p. 11
(emphasis added). We find that the “adapted to” language used in the preamble is
merely a statement of the intended use of the support and is not a limitation of the
claim. Rather, this language merely requires that the support is capable of being
used on a cane shaft or a crutch strut. We see no reason why the jacket of Shrader
would not be capable of such use. As such, we sustain the examiner’s rejection of
claims 1 and 12-14 under 35 U.S.C. § 102(e) as being anticipated by Shrader.
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