Appeal No. 2006-2982 Page 14
Application No. 10/458,112
Appellant argues that a person of ordinary skill would recognize the
device disclosed by Richter as magnetic media and not as a magnetic
switching device [brief, page 8]. Appellants argue that there is no disclosure
that Richter’s underlayer 3 is magnetic in Richter’s various embodiments
[brief, page 9]. Appellants further assert that Richter’s layer 8A is not a
magnetic film with superparamagnetic particles on its surface [id.].
Appellants further argue that the preamble limits the structure of the
claimed invention and therefore must be considered as a limitation [id.].
The examiner disagrees [answer, page 14]. The examiner argues that
in the broadest sense, magnetic media represents a plurality of bits that
switch binary states to store digital information [id.]. The examiner notes
that Richter shows (in fig. 2) magnetic layers 3 and 4, and a “barrier layer”
(8b) formed on magnetic layer (3) [id.]. The examiner argues that because
Richter’s device has the same structure as appellants’ claimed invention that
Richter’s device is capable of performing the intended purpose or function of
a switching device [id.].
We note that the determination of whether preamble recitations are
structural limitations can be resolved only on review of the entirety of the
application “to gain an understanding of what the inventors actually invented
and intended to encompass by the claim.” Corning Glass Works v. Sumitomo
Elec. U.S.A., Inc., 868 F.2d 1251, 1257, 9 USPQ2d 1962, 1966 (Fed. Cir.
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