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Q: Claim Differentiation in Patent Law ( No Answer,   2 Comments )
Question  
Subject: Claim Differentiation in Patent Law
Category: Miscellaneous
Asked by: jw2000-ga
List Price: $15.00
Posted: 18 Jan 2005 08:44 PST
Expires: 17 Feb 2005 08:44 PST
Question ID: 459236
Are two claims considered different if they both contain the same
limitations but one of them recites some of the limitations in the
preamble?
Answer  
There is no answer at this time.

Comments  
Subject: Re: Claim Differentiation in Patent Law
From: socal-ga on 18 Jan 2005 14:18 PST
 
For US Law

Yes, they are different.  The preamble DOES NOT limit the claim,
unless it is a Jebson claim where the preamble is reciting the prior
art.

The claim limitations are those words after "consisting", "comprising"
or other similar terms.
Subject: Re: Claim Differentiation in Patent Law
From: jw2000-ga on 18 Jan 2005 16:12 PST
 
I did a little research and found a few cases which state that a
claim?s preamble can be considered a claim limitation when it is
?necessary to give life, meaning and vitality? to the claim.  See In
Re Cruciferous Sprout Litigation, 2002 WL 1917373 (Fed. Cir. 2002)
(citing Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d
1251, 1257 (Fed. Cir. 1989).  On the other hand, if the preamble
?offers no distinct definition of any of the claimed invention?s
limitations, but rather merely states . . . the purpose or intended
use of the invention,? then the preamble cannot be read as a
limitation on a claim.  See Pitney Bowes, Inc. v. Hewlett-Packard
Co.,182 F.3d 1298, 1305 (Fed. Cir. 1999).
Is this research flawed?  I am just a student.  Thanks.

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