Appeal No. 2006-0965
Application No. 10/827,051
We begin our analysis with claim construction. Before addressing the
examiner's rejections based upon prior art, it is an essential prerequisite that the
claimed subject matter be fully understood. Analysis of whether a claim is
patentable over the prior art begins with a determination of the scope of the claim.
The properly interpreted claim must then be compared with the prior art. Claim
interpretation must begin with the language of the claim itself. See Smithkline
Diagnostics, Inc. v. Helena Laboratories Corp., 859 F.2d 878, 882, 8 USPQ2d
1468, 1472 (Fed. Cir. 1988). Accordingly, we will initially direct our attention to
appellants' claim 24 to derive an understanding of the scope and content thereof.
We note at the outset the language "[a] position maintainer for a workpiece,
comprising:” According to appellants (Brief p. 3), the position maintainer language
in claim 24 distinguishes over Vreeland's workpiece. We disagree. In order for a
preamble to be given patentable weight, it is necessary that the preamble breath life
and meaning into the claim. Here, the language "position maintainer" does not
provide antecedent basis for any language in the claim. In addition, the claim is
complete in and of itself, and does not rely upon the language "position
maintainer" for completeness. Accordingly, we find that the language "position
maintainer" in claim 24 fails to breath life and meaning into the claim, and has not
been given patentable weight.
From our review of Vreeland, we agree with the examiner that tube 18,
chuck 21, and wheel 23 (figure 1) meet the claimed biasing device because these
elements cooperate to move glass tube 31 downwardly through perforated stopper
29 (col. 1, ll. 31-34 and 42-53). In addition, although we do not agree with the
examiner (Answer p. 3) that each 1/3 of base plate 25 can be considered to be a
plurality of stoppers switchably exclusibly interposed between the surface 30 and
the biasing device, we find that this limitation is met for the reasons which follow.
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