Appeal 2007-2812
Application 10/337,236
Sys., Inc., 916 F.2d 683, 688, 16 USPQ2d 1436, 1441 (Fed. Cir. 1990)
(quoting Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 896,
221 USPQ 669, 675 (Fed. Cir. [1984]), cert. denied, 469 U.S. 857 (1984)).
“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 this case, the Specification indicates that “magnetically navigable
guidewires have been developed which can be controlled with the
application of an external magnetic field” (Spec. 1: [0002]). The navigation
is enabled by having a “magnetically response element” at the guidewire tip
that is deflected in the desired direction by the externally applied magnetic
field (Spec. 6: [0022]). The guidewire is described by the Specification as
being “sufficiently stiff that it can be advanced in the selected direction by
pushing [its] . . . proximal end” (Spec. 4: [0017]), but it also must be flexible
enough that its direction can be displaced (“deflection angle”) by the
external magnetic field (see Spec 6: [0025]). Thus, the phrase “magnetically
navigable medical guidewire” would be understood by persons of skill in the
art, in the light of the Specification, to mean that the guidewire comprises a
“magnetically responsive element” which enables it to be directed
(“navigable”) to a desired site in a blood vessel (see Answer 4) and that it is
also be flexible enough to be steered through blood vessels. The
“magnetically responsive element” is explicitly recited in the claim. With
respect to the flexibility requirement, we do not interpret the phrase to
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