Appeal No. 2006-1325
Application No. 10/163,610
1 the use of conduits or chases to carry such wiring or the connection of
2 wiring to distribution blocks within the wall system and behind covers.
3 Appellants argue the preamble language “for installation in a hotel
4 room, resort, hospital, apartment building or residential structure” in claim 1
5 gives meaning to the limitations requiring at least one preinstalled utility
6 (Br. 9). The preamble of a claim does not limit the scope of the claim when
7 it merely states a purpose or intended use of the invention; however, terms
8 appearing in a preamble may be deemed limitations of a claim when they
9 give meaning to the claim and properly define the invention. See In re
10 Paulsen, 30 F.3d 1475, 1479, 31 USPQ2d 1671, 1673 (Fed. Cir. 1994). In
11 this instance, the preamble language in question appears to merely state a
12 purpose or intended use of the structure. Kelley’s work space management
13 system appears reasonably capable of being installed in any of the
14 environments set forth in the preamble and Appellants have not cogently
15 explained why it is unsuitable for such use. Moreover, it is not apparent, and
16 Appellants have not explained, how the preamble language in question
17 further defines or limits the structure, including the at least one
18 “preinstalled” utility, recited in the claims.
19 In light of the above, Appellants’ arguments do not demonstrate that
20 the Examiner has erred in rejecting claim 1 as being anticipated by Kelley.
21 The rejection is sustained as to claim 1, as well as claims 4-6 and 9-11 which
22 Appellants have not argued separately apart from claim 1.
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