Can a claim preamble provide antecedent basis for claim limitations?
Yes, a claim preamble can provide antecedent basis for claim limitations, but this depends on the specific circumstances and the nature of the invention. The MPEP 2173.05(e) states:
“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.”
While this statement is not specifically about antecedent basis, it underscores the importance of the preamble in claim interpretation. In practice:
- If the preamble is considered to give life, meaning, and vitality to the claim, it can provide antecedent basis for later claim elements.
- Elements introduced in the preamble can be referred to later in the claim body using “the” or “said” if they are essential to the invention.
- However, if the preamble merely states the intended use or field of use, it may not provide proper antecedent basis for claim limitations.
For example, in a claim starting with “A method of treating diabetes comprising…”, the term “diabetes” could potentially provide antecedent basis for later references to “the disease” or “said condition” in the claim body, if diabetes is central to the invention.
It’s important to note that while preambles can provide antecedent basis, it’s often clearer and safer to introduce key elements in the body of the claim to avoid any ambiguity.
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