Appeal 2007-0251
Application 10/085,310
Appellants submit that the claim preamble limits the structure of the
claimed invention to a handheld computer that can be conveniently stored in
a pocket. We find nothing in the preamble, nor in the body of the claim, that
mentions storage in any pocket. The body of the claim appears to set forth a
structurally complete invention, without the need to presume that the
preamble further sets forth structure that is necessary for completion. The
preamble thus may be read as merely providing a name for the device. The
preamble of a claim does not limit the scope of the claim when it merely
states a purpose or intended use of the invention. In re Paulsen, 30 F.3d
1475, 1479, 31 USPQ2d 1671, 1673 (Fed. Cir. 1994).
Appellants further submit that the preamble has been relied upon
during prosecution to distinguish the claimed invention from Moriconi, and
thus represents a limitation, relying on a quotation from Catalina Mktg. Int’l
v. Coolsavings.com, Inc., 289 F.3d 801, 808-09, 62 USPQ2d 1781, 1785
(Fed. Cir. 2002).
In our view, the assertion of a principle relating to a patent
controversy in U.S. District Court (infringement) litigation is misplaced.
Here, there is no “prosecution history” because the prosecution is ongoing;
the history is thus incomplete. Further, unlike proceedings in a District
Court, the claims in an application may be amended to be commensurate
with arguments made during prosecution, to the extent the amendments are
supported by the disclosure, and thus remedy uncertainty as to the scope of a
claim. “An essential purpose of patent examination is to fashion claims that
are precise, clear, correct, and unambiguous. Only in this way can
3
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: September 9, 2013