Appeal 2007-0625
Application 09/969,299
the claim and properly define the invention.” . . . Although
no “litmus test” exists as to what effect should be accorded to
words contained in a preamble, review of a patent in its
entirety should be made to determine whether the inventors
intended such language to represent an additional structural
limitation or mere introductory language.”
In re Paulsen, 30 F.3d 1475, 1479, 31 USPQ2d 1671, 1673 (Fed. Cir. 1994).
In Paulsen, the contested preamble language was a “portable
computer.” The claim limitations following “comprising” listed the various
parts commonly found in a computer. Id. at 1478. The Federal Circuit
concluded the term “computer” was “one that ‘breathes life and meaning
into the claims, and, hence, is a necessary limitation to them.’” Id. at 1479.3
The disputed language in claim 1 is analogous to that disputed in
Paulsen. Thus, it “breathes life and meaning into the claims, and hence, is a
necessary limitation to them.” Id. We disagree with the Examiner that
“tampon” is merely a statement of intended use. (See Answer 7.) While the
Examiner may be correct that “different cultures use different materials as
tampons” and “tampons can be of different shapes” (id.), a tampon is an
article of manufacture for insertion into the vagina and thus does impose
limits on the claim, just as a computer is an article of manufacture.
Further, the body of the claim requires an “absorbent tampon
material.” The inclusion of “tampon” in this phrase confirms Appellants
“intended” their preamble language “to represent an additional structural
limitation.” See Paulsen, 30 F.3d at 1479, 31 USPQ2d at 1673. Merely
identifying an absorbent material while ignoring the language “tampon,” as
3 Paulsen was affirmed because the court agreed with the Board that
“computer” included a calculator. Id. at 1480-81.
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