Appeal 2007-0465
Application 10/146,813
limitations of the claimed invention, and the preamble merely states, for
example, the purpose or intended use of the invention, rather than any
distinct definition of any of the claimed invention's limitations, then the
preamble is not considered a limitation and is of no significance to claim
construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298,
1305, 51 USPQ2d 1161, 1166 (Fed. Cir. 1999).
The body of claim 1 is complete in itself and does not refer to or
otherwise breathe life and breath into the preamble. Accordingly, the
preamble is merely a statement of the environment and is not a claim
limitation. Nevertheless, we consider the preamble because it has been
addressed by the Examiner.
(4)
Although the issue was not raised by the Examiner, at least claim 1
should be interpreted as a forbidden "single means" claim. Since we affirm
the prior art rejection of claim 1, we will not enter a new ground of rejection
and leave the issue to be addressed in any further prosecution.
"An element in a claim for a combination may be expressed as a
means . . . for performing a specified function . . . ." 35 U.S.C. § 112, ¶ 6.
However, a claim to a single means is forbidden and should be rejected
under § 112, ¶ 1. "The long-recognized problem with a single means claim
is that it covers every conceivable means for achieving the stated result,
while the specification discloses at most only those means known to the
inventor." In re Hyatt, 708 F.2d 712, 714, 218 USPQ 195, 197 (Fed. Cir.
6
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