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| 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? |
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| There is no answer at this time. |
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| 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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