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`PA'Fl';til'l'§ TRAUEttlARi<§ IF L.eiw.°.i~=oLic'~F PRooucrsssERvicE§ lN\.lENTOR§ Nstyssnoticebl r-'Ao'§ AEIDUT us
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`2111 Ctaim Interpretation; Broadast Reasonable Interpretation [R-11.2013]
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`CLAIMS MUST BE GIVEN THEIR BROADEST REASONABLE INTERPRETATION IN LIGHT OF THE
`SPECIFICATION
`
`During patent examination, the pending claims must be ‘given their broadest reasonable interpretation consistent with the
`specification.‘ The Federal Circuit's en banc decision in Phillips v. AWH Corp, 415 F.3d 1305. 1316. 75 USPQ2d 1321. 1325
`(Fed. Cir, 2005) expressly recognized that the USPTO employs the ‘broadest reasonable interpretation" standard.
`
`The Patent and Trademark Office ("PTO") determines the scope of claims in patent applications not solely on the basis of the
`claim language, but upon giving claims their broadest reasonable construction "in light of the specification as it would be
`Interpreted byone ofordinaiy skill in the art." in realm Acad. ofscl. Tech. Ctr, 362-’ F.3d1350,1364[.‘l'0 USP02d 182?.
`1030] (Fed. Cir. 2004) Indeed. the rules of the PTO require that application claims must “conform to the invention as set forth
`in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis
`in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description.‘ 33
`PFR 1 -7.5_L<.3}.U.IL‘!'£¢fl?-9I!39;§.P.tt&r;.U1L0.'ILf1P.9.1!39.3§.$J.-
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`See also in re Hyatt. 211 F.3d 1367. 13'r'2. 54 USPO2d ‘I654. 156? (Fed. Cir. 2000). Because applicant has the opportunity to
`amend the claims during prosecution. giving a ciairn its broadest reasonable interpretation will reduce the possibility that the claim,
`once issued. will be interpreted more broadly than is justified. in re Yarriarriolo. ?40 F.2d 1569. 15‘i'1 (Fed. Cir. 1984); in re Zlelz.
`893 F 2d 313321.13 USPt.‘.t2d 1320. 1322 (Fed. Cir. 1989) ("During patent examination the pending claims must be interpreted
`as broadly as theirterms reasonably allow"); lnrePrater. 415 F.2d 1393. 1404-05. 162 USPQ 541. 55tJ~5‘l (CCPA19Ei9)(Clai'm 9
`was directed to a process of analyzing data generated by mass apectmgraphto analysis of a gas. The process comprised selecting
`the data to be analyzed by subjecting the data to a mathematical manipulation. The examiner made rejections under 35 t..l.S.Ct.
`l.t?J_Lrn.i2.ei9;9..t!1.5;a. l‘J.‘.!i.'.I-..I,1.‘.i!.!.”i‘.I.0.*t3_'1?51?'_5.I_3t"l°I file‘;$L$4Q2strua.ciL&¢i1&eri22-JJilmttt<!!J.si§t§l2§.6.§t- in the -2’:..5._U.=§.i11F;.1.E|_2_trn or-*2 -9_01_5_-
`a3gx—l.ittmii:d9ggg_23§l_§}_rojectlon. the examiner explained that the claim was anticipated by a mental process augmented by pencil
`and paper markings. The court agreed that the claim was not limited to using a machine to carry out the process since the claim
`did not explicitly set forth the machine. The court explained that "reading a claim in light of the specification. to thereby interpret
`limitations explicitly recited in the claim. is a quite different thing from ‘reading It|"l‘IiI.aIIDl'tS of the specification into a claim,‘ to
`thereby narrow the scope of the claim by implicitly adding disclosed limitations which have no express basis in the claim.’ The
`court found that applicant was advocating the latter. i.e.. the impermissibie importation of subject matter front the specification into
`the claim I. See atso in re Morris. 12?’ F.3d1048.1054-55.44 USPQ2d 1023. 102?’-28 (Fed. Cir. 199?) (The court held that the
`PTO is not required. in the course of prosecution. to interpret claims in applications in the some mariner as a court would interpret
`claims in an infringement suit. Rather. the "PTO applies to verbiage of the proposed claims the broadest reasonable meaning of
`the words in their ordinary usage as they would be understood by one ofordinary skill in the art. taking tntoaccount whatever
`enlightenment by way of definitions or otherwise that may be afforded by the written description contained in applicant's
`spei::i‘fication.").
`
`The broadest reasonable interpretation of the claims must also be consistent with the interpretation that those skilled in the art
`would reach. In re Cori‘ri'g."lt‘. 165 F.3d 1353. 1359, 49 USPQZCI ‘I464. 1468 (Fed. Cir‘ 1939) {The Boards-construction of the claim
`limitation ‘restore hair growth” as requiring the hair to be returned to its original state was held to be an incorrect interpretation of
`the limitation. The court held that. consistent with applicants disclosure and the disclosure of three patents from analogous arts
`using the same phrase to require only some increase in hair growth, one of ordinary skill would construe “restore hair growth" to
`mean that the claimed method increases the amount of hair grown on the scalp. but does not necessarily produce a full head of
`hair). Thus the focus of the inquiry regarding the meaning of a claim should be what would be reasonable from the perspective of
`one of ordinary Skill in the art. in re Sullco Surface. Inc. 603 F.3d 1255, 1260. 94 USPQ2d 1640, 1644 (Fed. Cir. 2010): In re
`Buszard, 504 F 3d 1364. 84 USPO2d 1‘l’49 (Fed. Cir 2007). In Buszaro‘. the claim was directed to a flame retardant composition
`comprising a flexible polyurethane foam reaction mixture. 504 F.3d at 1365. E4 USF'Q2d at 1?50. The Federal Circuit found that
`the Board's interpretation that equaled a ‘flexible’ foam with a crushed “rigid” foam was not reasonableld. at 135?. 84 USP02d at
`1'i'51. Persuasive argument was presented that persons experienced in the field of polyurethane foams know that a flexible
`mixture is different than a rigid foam mixture. in‘. at 1365. 04 USPQ2d at 1751.
`
`See l‘_.Il_l'—_‘l;:P § 2'I‘l'3.0z_{Li2173.Ilt1l_g1{FtIflB'2'1 75931for further discussion of claim interpretation in the context of analyzing claims for
`
`Cflmpiiaflfie Will’! 3.5.ir‘..$-.C.-. ‘f..1ZI?ll..lI..t!i?i.J-9..U.15:64P11*:!...|i.l.I1TI.l!l.::1i.._li.1€!3§tJ_2a.t'fi5_.Zt51.0! p.f.e_4\_IA. .35 Ll-5-.C.._11.Z. m.t!f‘-'E'99'I5'.a.9E¥-'
`Lh.tt11l£t_dFLI‘r_1't§l3§.?.13}.. 5590"“ Paragraph-
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`2111.01 Plain Meaning {R—11.2013]
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`{Editor Note: This MPEP section is appllcabre to applicati'ons subject to the first inventor to tile (FlTF} provisions of the AM except
`that the relevant data is the “effective filing date" of the claimed invention instead of the "time of the invention." which is only
`applicable to applications subjeclto £r:E_l'_g_4“1_l’£I_§_5__U.__S C_._1"__t‘.2I_2__(i1’l_1p_(§f‘f_)N-_‘S_}
`ri§q3’}£3_Q __e_3_L. See § o(e m o -
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`.30.t5:9129.::l.li.im.lrraLd.1rr1JaitLald..and M.-‘3§f?.§._21§.01s£!.1§
`taste! Serif
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`I. THE WORDS OF A CLAIM MUST BE GIVEN THEIR “PLAIN IIIIEANING” UNLESS SUCH IIIEANING
`IS INCONSESTENT WITH THE SPECIFICATION
`
`Under a broadest reasonable Interpretation. words of the claim must be given their plain meaning. unless such meaning is
`inconsistent with the specification. The plain meaning of a term means the ordinary and customary meaning given to the term by
`those of ordinary skill in the art at the time ofthe invention. The ordinary and customary meaning of a term may be evidenced by a
`variety of sources. including the words of the claims themselves. the specification. drawings. and prior art. However. the best
`source for determining the meaning of a claim term is the specification - the greatest clarity is obtained when the specification
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`http:fl’www.i.ispt0.gov/wcblofficcsfpacfntpcpfsfi1 I1.htmI
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`5/20./2014
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`DMC Exhibit 2084_001
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`serves as a glossary for the claim terms. The presumption that a term is given its ordinary and customary meaning may be
`rebutted by the applicant by clearly setting forth a different definition oi the term in the specification. in re Monis. 12? F.3d 1048.
`1054, 44 USPQ2d 1023, 1028 (Fed. Cir. 199?) (the USPTO looks to the ordinary use of the claim terms taking into account
`deflnitic-nsor other ‘enlightenment’ contained in the written description); But cf. in re Am. Acad. orscr. Tech. Cir, 36? F.3d 1359,
`1369. TFO USF'0.2d 182?. 1334 (Fed. Cir. 2004} (‘We have cautioned against reading limitations into a claim from the preferred
`embodiment described in the specification, even if it is the only embodiment described. absent clear disclaimer in the
`specificaiionf). When the specification sets a clear path to the claim language. the scope of the claims is more easily determined
`and the public notice function of the claims is best served.
`
`Although claims of issued patents are interpreted in light of the specification, prosecution history. prior art and other claims, this is
`not the mode of claim interpretation to be applied during examination During examination. the ciaims must be interpreted as
`broadly as their terms reasonably allow. in re American Academy of Science Tech Center. 36? F.3d 1359, 1369, 70 lJSPO2d
`1827, 1834 (Fed. Cir 2004) (The USPTO uses a different standard for construing claims than that used by district courts‘. during
`examination the USPTO must give claims their broadest reasonable interpretation in light of the specification.). This means that
`the words of the claim must be given their plain meaning unless the plain meaning is inconslstentwith the specification. in re Zieiz,
`893 F 2d 319. 321. 13 USPQ2d 1320. 1322 (Fed. Cir 1989) (discussed below); Chefxtmerica. inc. v, Lamb-Weston, .inc.. 358
`F.3d 1371, 13?2. 69 USPO2d 1857 (Fed. Cit‘. 2004) (Ordinary. simple Engiish words whose meaning is clear and unquestionable.
`absent any indication that their use in a particular context changes their meaning. are construed to mean exactly what they say.
`Thus, ‘heating the resulting batter-coated dough to a temperature in the range of about400°F to 350°F' required heating the
`dough, rather than the air inside an oven. to the specified temperature).
`
`ll.
`
`IT IS IMPROPEFE TO IMPORT CLAIM LIMITATIONS FROM THE SPECIFICATION
`
`"Though understanding the claim language may be aided by explanations contained in the written description. it is important not to
`import into a claim limitations that are not part of the ctalm. For example. a particularembodiment appearing in the written
`description may not be read into a claim when the claim language is broader than the embodiment.“ Superguide Corp. v. iJi'recTv'
`Enterprises. inc. 356 F.3d are. 375, 60 USPQ2d 1865, 1868 (Fed. Cir. 2004). See also i_i'ebei—Fiarsliei'm Co. v. Medrad iric.. 358
`F.3d 898. 906. 59 l..iSF't'_J2d1B01, 180? (Fed. Cir. 2004) (discussing recent cases wherein the court expressly rejected the
`contention that if a patent describes only a single embodiment. the claims of the patent must be construed as being limited to that
`embodiment); E—Pess Techs. inc ir. 3Com Corp, 3-13 F.3d 1364. 1369. 57 USPQ2d 194?, 1950 (Fed. Cir. 2003) (‘interpretation
`of descriptive statements In a patent's written description is a difficult task. as an inherent tension exists as to whether a statement
`is a clear lexicographic definition or a description of a preferred embodiment. The problem is to interpret claims ‘in view of the
`specification’ without unnecessarily importing limitations from the specification into the claims‘); Aitins inc. V. Symantec: Corp, 318
`F.3d 1363, ‘l3?1. E5 USF'Q2d1865, ‘lE69~i’D (Fed. Cir. 2003) (Although the Specification discussed only at single embodiment. the
`court held that it was improper to read a specific order of steps into method claims where. as a matter of logic or grammar. the
`language of the method claims did not impose a specific order on the performance of the method steps. and the specification did
`not directly or implicitly require a particular order). See also subsection iV.. below When an element is claimed using language
`failing under the scope of 35 U.S.C. 1-12 a in
`J-9015-rr
`xvi.htmliln_l__g1__1_d_i}_§p_2_o_a_§_q":tg5j_or p;g_-élgw.'§§__q,§_.i;_._r_1g_(;p;g_ep-9b15_-
`;I2_Ex__A-_L_t_’_I_V§_I‘_l;I_}_fii_(_I§:_3__§iv5_iJ_Z3__Zfi}_, Eith paragraph (often broadly referred to as meana— (or step—) pli.is— function language). the specification
`must be consulted to determine the structure. material. or acts corresponding to the function recited in the claim. in re Dcnaidsori,
`16 F.3d 1189. 29 USPQ2d 18-1-5 (Fed. Cir 1994) (see f.1E_E£-‘__§_2_1__1'r1_'|_l‘_$_:3_1i_Bi.htriiIrhtGc2192?!!!- _I'§_lEjIéfi5§*_§_.g_§__t_3§
`tfifilafi..53!o1i#5i£_I12_2P§3fiLl-
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`in in re Zlei2.s.u,ora. the examiner and the Board had interpreted claims reading "normally-solid polypropylene" and "normally solid
`polypropylene having a crystalline polypropylene content" as being limited to "normally solid linear high homopolymers of
`propylene which have a crystalline polypropylene content.” The court ruied that limitations. not present'in the claims, were
`irnpropeiiy imported from the specification. See also in re ilifarosi. ?10 F.2d T539, 802. 213 USPQ 289, 292 (Fed. Cir. 1983)
`(“claims are not to be read in a vacuum. and limitations therein are to be interpreted in light of the specification in giving them their
`‘broadest reasonableinterpretation."' (quoting in re Oiruzawa. 53? F.2d 545,5n1B.‘i9t‘l USPO 464, 466 (CCPA 191(6)). The court
`looked to the specification to construe "essentially free of alkali metal" as including unavoidable levels of impurities but no more.)
`Compare in re Wales. 989 F.2d 1202. 26 LiSPO2d 1885 (Fed. Cir. 1993) {unpublished decision - cannot be cited as precedent}
`(The claim related to an athletic shoe with cleats that ‘break away at a preselected level of force" and thus prevent injury to the
`wearer. The examiner rejected the claims over prior art teaching athletic shoes with cleats not Intended to break on and
`rationalized that the cleats would break away given a high enough force. The court reversed the rejection stating that when
`interpreting a claim term which is ambiguous, such as '”a preselected level of force.‘ we must look to the specification for the
`meaning ascribed to that term by the inventor." The specification had defined "preselected level of force" as that level of force at
`which the breaking away will prevent injury to the wearer during athletic exertion.)
`
`“PLAIN MEANING” REFERS TO THE ORDINARY AND CUSTOMARY MEANING GIVEN TO THE
`Ill.
`TERM BY THOSE OF ORDINARY SKILL IN THE ART
`
`"lT]he ordinary ‘and customary meaning of a claim term is the meaning that the term would have to a person of ordinary sltiil i'n the
`art in question at the time of the invention. i'.e.. as of the effective filing date of the patent application.’ Pnilirps v. AWH Corp..415
`F.3d 1303, 1313, T5 USPO-2:! 11321. 1326 (Fed. Cir. 2005) {en banc). Sunrace Roots Enter. Co. v. SRAM C0r_o,.335 F.3d12S8,
`1302, 6? USU-"Q2d ‘H38, 1441 (Fed. Cir. 2003); Br0oktrr"li—Wr'ik 1. LLC v. intuitive Surgical, lric:., 334 F.3d 1294, 1298 67 USPQ2d
`1132. 1136 (Fed. Cir. 2003) ("in the absence of an express intent to impart a novel meaning to the claim terms, the words are
`presumed to take on the ordinary and customary meanings attributed to them by those of ordinary skill in the ari."). It is the use of
`the words in the context of the written description and customarily by those sldiled in the relevant art that accurately refiects both
`the ‘ordinary' and the "customary" meaning of the terms in the claims. Ferguson Beauregaro‘.iT.o_oi'c Controls in Mega Systems.
`350 F.3d 132?, 1338. 69 USPCi2d 1001, 1009 (Fed. Cir. 2003) (Dictionary definitions were used to detenriine the ordinary and
`customary meaning of the words "normal' and "pre_detemiirie" to those skilled in the art. In construing claim terms, the general
`meanings gleaned from reference sources. such as dictionaries, must always be compared against the use of the terms in context,
`and the intrinsic record must always be consulted to Identify which of the different possible dictionary meanings is most consistent
`with the use of the words by the inventor); ACTV. inc. v. The Walt Disney Company. 346 F.3d 1082. 1092, 66 USF'O2d 1516-.
`1524 (Fed. Cir 2003] {Since there was no express definition given tor the term ‘URL‘ in the specification. the term should be given
`its broadest reasonable interpretation consistent with the intrinsic record and take on the ordinary and customary meaning
`attributed to it by those of ordinary skill in the art: thus. the term "URL" was held to encompass both relative and absolute URLs.);
`and E-Pass Technologies. inc. v. 3Com Corporation. 343 F.3d 1364. 1368, 67 USPQ2d 1947. 1949 (Fed. Cir. 2003) (Where no
`explicit definition for the tenn ‘electronic multi-function card" was given in the specification, this term should be given its ordinary
`meaning and broadest reasonable interpretation: the term should not be limited to the industry standard definition of credit care
`where there is no suggestion that this definition applies to the electronic rnuiti-function card as claimed, and should not be limited
`to preferred embodiments in the 5pec'itication.]i.
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`httpziiwww.Lispto.govfweb/0fficesi’pacx’mpcpi's21 1 I .htm1
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`DMC Exhibit 2084_002
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`The ordinary and customary meaning of a term may be evidenced by a variety of sources. including "the words of the claims
`themselves. the remainder of the specification. the prosecution history. and extrinsic evidence concerning relevant scientific
`principles, the meaning of technical terms. and the state of the art." Phillips v. AWH Corp. 415 F.3d at 1314. ‘I5 USPCl2d at 1327.
`if extrinsic reference sources. such as dictionaries. evidence more than one definition for the term. the intrinsic record must be
`consulted to identify which of the different possible definitions is most" consistent with applicants use of the tenns. Broolrhiii-Willi I.
`334 F.3d at 1300. 6? USPC.l2d at 113?; see also Ranisi1awPi.C v. ii.-iarposs Sociele‘per.ilzloni', 158 F.3d 1243. 1250. 48 USFiQ2i:l
`111?. 1122 (Fed. Cir. 1998}("‘ii'\«'l1ere there are several common meanings fora claim term. the patent disclosure serves to point
`away from the improper meanings and toward the proper meanings.') and l/ilronics Corp. v. Concepfronic inc. 30 F.3d 1576,
`1533. 39 USPQ2d 15?3, 15?? (Fed. Cir. 1996) (construing the term "solder retlow temperature" to mean "peak reflciw
`temperature" of solder rather than the ‘liquidtis temperature‘ of solder in order to remain consistent with the specification). if more
`than one extrinsic definition is consistent with the use of the. words in the intrinsic record. the claim terms may be construed to
`encompass all consistent meanings. Seee.g,. Rexnord Corp. v. Lartram Corp. 2?4 F.3d 1335. 1342. 60 USPQ2cl1851. 1654
`(Fed. Cir. 2001) (explaining the court's analytical process for determining the meaning of disputed claim terms); Tom Co. v Litiliite
`Consul. l‘l"icit.rs.,
`ll‘ii:‘.. 199 F.3d 1295. 1299. 53 USPQ2d 1055, 106? (Fed. Cir. 1999} ("[lN|c-rds in patent claims are given their
`ordinary meaning in the usage of the field of the invention. unless the text of the patent makes clear that a word was used with a
`special meaning"). Compare MSM investments Co. v. Carofwood Corp, 259 F.3d 1335. 1339-40. 59 USPQ2d 1856. 1659-60
`(Fed. Cir. 2001) (Ciaims directed to a method of feeding an animal a beneficial amount of methylsulfonylmethane (MSM) to
`enhance the animal's diet were held anticipated by prior oral administration of MSM to human patients to relieve pain. Although
`the ordinary meaning of "feeding" is limited to provision offood or nourishment. the broad definition of "tood' in the written
`description warranted finding that the claimed method encompasses the use of MSM for both nutritional and pharmacological
`purposes); and Rapoport v. Demenl‘. 254 F.3d 10511059-60, 59 USPQ2d 1215, 1219-20 (Fed, Cir 2001) (Both intrinsic
`evidence and the plain meaning of the term "method for treatment of sleep apneas' supported construction of the term as being
`limited to treatment of the underlying sleep apnea disorder itself. and not encompassing treatment of anxiety and other secondary
`symptoms related to sleep apnea }.
`
`W. APPLICANT MAY BE OWN LEXICOGRAPHER
`
`An applicant is entitled to be his or her own lexicographer and may rebut the presumption that claim terms are to be given their
`ordinary and customary meaning by clearly setting forth a definition of the term that is different from its ordinary and customary
`meaning{s). See in re Pauisen, 30 F.3d 14‘i'5, 1480. 31 USPC.'l2d 16?1. ‘EBT4 (Fed. Cir. 1994) (inventor may define specific terms
`used to describe invention, but musldo so "with reasonable clarity. deliberateness, arid precision" and. it done. must “set out his
`uncommon definition in some manner within the patent disclosure‘ so as to give one of ordinary slrill in the art notice of the
`change" in meaning) (quoting lnielliceii. inc. v. Phoriorriefrics. inc. 952 F.2d 1384. 136?-B3, 21 USPQ2d ‘i383. 1366 (Fed Cir.
`1992)). Where an explicit definition is provided by the applicant for a term, that definition will control interpretation of the term as it
`is used in the claim. Toro Co. v.
`lililiire Consolidated lnciustries irir:.. 199 F.3d 1295, 1301. 53 USPQ2d 1065. 1069 (Fed. Cir. 1999)
`(meaning of words used in a claim is not construed in a "lexicographic vacuum. but in the context of the specification and
`drawings"). Any special meaning assigned to a term "must be sufficiently clear in the specification that any departure from
`common usage would be so understood by a person of experience in the field of the invention." Mullifonn Desiccarits inc. v.
`illiedzam t.rd.. 133 F.3d 14‘i3, 147?. 45 USPD2d 1429. 1432 (Fed. Cir. 1998). See also Process Control Corp. v. Hyofieciairn
`Corp, 190 F.3d 1350. 135?. 52 USPQ2ci1029. 1033 (Fed. Cir. 1999) and me? § g173,lJ5igl [521T3.IIlI'll|lIldU€2173__§fl]_. The
`specification should also be relied on for more than just explicit ieiricography or clear disavowal of claim scope to determine the
`meaning of a claim term when applicant acts as his or her own lexicographer. the meaning of a particular claim tenn may be
`defined by Implication, that is. according to the usage of the term in the context in the specification. See Phillips V. AWH Corp, 415
`F 3d 1303. 75 USPQ2d 1321 (Fed. Cir. 2005) {en baricl. and Vifronics Corp. v. Coriceptronic inc. 90 F.3d 1576. 1583.
`39 USPQ2d15?3. 157‘? (Fed. Cir. 1996}. Compare Mercit & Co.. inc. V. Teva Pharms. USA. Inc. 395 F.3d1364,13YU.}_'3
`USPQ2d 1641. 1646 (Fed Cir. 2005) (the court held that patentee failed to redefine the ordinary meaning of "about" to mean
`"exactly" in clear enough terms to justify the counterintullive definition of 'about" stating that "li'\i'l'ien a patentee acts as his own
`Iexicographer in redefining the meaning of particular claim terms away from their ordinary meaning. he must clearly express that
`intent in the written description").
`
`See also MPEj*_l$_g_‘l73.05tal Is2j_T_3_.j1iynl#dDo21?33§_1.
`
`2111.02 Effect of Preamble [R-08.2012}
`
`The determination of whether a preamble limits a claim is made on a case-by-case basis in light of the facts in each case: there is
`no litmus test defining when a preamble limits the scope of a claim. Catalina Mkrg. int’: v. Cool‘savi'ngs.com, inc, 209 F 3d 801,
`808. 62 USF'Q2d 1'i’31. 17135 (Fed. Cir. 2002}. See i'o‘. at 808-10. 62 USF'(.'l2d at 1?fi«l-86 for a discussion ofguldeposta that have
`emerged from various decisions exploring the preai-ril:ile‘s effect on claim scope. as well as a hypothetical example illustrating
`these principles.
`
`i.i’i'£ali'nk
`“[A] claim preamble has the import that the claim as a whole suggests for it.“ Sell Communications Research. inc. v.
`Communications Corp. 55 F.3d 615. 620. 34 USPQ2d 1615. 1820 (Fed. Cir. 1995). ‘if the claim preamble, when read in the
`context of the entire claim. recites limitations of the claim. or. if the claim preamble is ‘necessary to give life. meaning, and vitality’
`to the claim. -then the claim preamble should be construed as if in the balance of the claim.” F-‘irney Bowes. inc. v. Hewlett-Packard
`Co, 182 F.3d126'8. 1305. 51 USPO2d 1161. 1165-66 (Fed. Cir. 1999). See also Jansen v. Rexallsundown. lnc.. 342 F.3d1329.
`1333. 85 USPQ2d 1154. 1158 (Fed. Cir. 2003)(lri considering the effect of the preamble in a claim directed to a method oftrealing
`or preventing pemicious anemia in humans by administering a certain vitamin preparation to "a human in need thereof.’ the court
`held that the claims‘ recitation of a patient or a human ‘in need" gives life and meaning to the preamble's statement of purpose-.).
`Krope v. Rollie, 137 F.2d 150. 152, BE USPQ 4?8. 461 (CCPA1951) (A preamble reciting ‘An abrasive ahicle" was deemed
`essential to point out the invention defined by ciaims to an article comprising abrasive grains and a hardened binder and the
`process of making it. The court stated “it is only by that phrase mat it can be known that the subject matter defined by the claims is
`comprised as an abrasive article. Every union of substances capable inter aiia of use as abrasive grains and a binder is not an
`‘abrasive article.” Therefore. the preamble served to further define the structtire of the article produced).
`
`I.
`
`PREAMBLE STATEMENTS LIMITING STRUCTURE
`
`Any terminology in the preamble that limits the structure of the claimed invention must be treated as a claim limitation, See. e.g..
`Coming Glass Worirs V. Sumilomo Eiec. U.S.A.. iric, 868 F.2d 1251. 1257. 9 LiSF‘O2d 1952. ‘I966 (Fed. Cir. 1989) (The
`determination of whether preamble recitations are structural limitations can be resolved only on review of the entirety of the
`application ‘to gain an understanding of what the inventors actually invented and intended to encompass by the claim '}; Pac-Tec
`inc. v. Amer-ace Corp. 903 F.2d 7'95. 301. 14 USF'Q2d 1l=.l?1, 1876 (Fed. Cir. 1990) (determining that preamble language that
`
`1"it“tp:/iwww.i.ispto.g0v/webiofficcs/pacirnpepis21 11.htmI
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`5/20i’2014
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`DMC Exhibit 2084_003