Appeal 2007-0814
Application 10/243,417
reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631,
2 USPQ2d 1051, 1053 (Fed. Cir. 1987), cert. denied, 484 U.S. 827 (1987).
“To establish inherency, the extrinsic evidence must make clear that the
missing descriptive matter is necessarily present in the thing described in the
reference, and that it would be so recognized by persons of ordinary skill.
Inherency, however, may not be established by probabilities or possibilities. The
mere fact that a certain thing may result from a given set of circumstances is not
sufficient.” In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed.
Cir. 1999) (citations omitted) (internal quotation marks omitted).
The claim preamble must be read in the context of the entire claim. The
determination of whether preamble recitations are structural limitations or mere
statements of purpose or use “can be resolved only on review of the entirety of the
[record] to gain an understanding of what the inventors actually invented and
intended to encompass by the claim.” Corning Glass Works v. Sumitomo Elec.
U.S.A., Inc., 868 F.2d 1251, 1257, 9 USPQ2d 1962, 1966 (Fed. Cir. 1989). If the
body of a claim fully and intrinsically sets forth all of the 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, 1165 (Fed. Cir. 1999). See also Rowe v.
Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997) (“where a
patentee defines a structurally complete invention in the claim body and uses the
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