Preambles as Limitations

By Jason Rantanen

American Medical Systems, Inc. v. Biolitec, Inc. (Fed. Cir. 2010)
Panel: Bryson (author), Dyk (dissenting), and Prost

It may come as no surprise that the law on whether claim preambles can serve as limitations is unclear.  The Federal Circuit is aware of this issue, and at least one judge suggests that it may be time for the court to address this issue en banc.

The patent in this case, No. 6,986,764, relates to technology for vaporizing tissue using laser radiation.  The invention can be used to treat Benign Prostatic Hyperplasia, a condition in which growth of the prostate gland restricts the passage of urine out of the bladder and through the urethra.  By vaporizing or ablating some tissue, the size of the prostate is reduced, thus reducing bladder outlet obstructions.  Although laser radiation was known in the art, various problems were associated with its use.

The inventors of the '764 patent determined that by using high "volumetric power density" (a high amount of energy delivered to a given volume of tissue) they could produce increased vaporization efficiency while minimizing one of the problems associated with the procedure, residual coagulation.  The patent is directed to various methods and devices for achieving this high volumetric power density by manipulating variables such as wavelength, output power, beam quality, irrigant composition, and distance between the optical fiber and the tissue.

The dispute on appeal hinged on whether the preamble constituted a limitation.  Claim 31 is representative of the method claims. (The apparatus claims are similar, but recite "[a]n apparatus for photoselective vaporization of tissue.")  It recites:

A method for photoselective vaporization of tissue, comprising:

delivering laser radiation to a treatment area on the tissue, the laser radiation having a wavelength and having irradiance in the treatment area sufficient to cause vaporization of a substantially greater volume of tissue than a volume of residual coagulated tissue caused by the laser radiation, wherein the delivered laser radiation has an average irradiance in the treatment area greater than 10 kiloWatts/cm2 in a spot size at least 0.05 mm2.

During claim construction, the district court determined that the preamble phrase "photoselective vaporization" was a "fundamental characteristic" of the invention, and construed the term to mean "using a wavelength that is highly absorptive in the tissue, while being absorbed only to a negligible degree by water or other irrigant."  Based on this construction, the court granted summary judgment in favor of the accused infringer.

On appeal, the majority disagreed, concluding that the preamble phrase "photoselective vaporization of tissue" does not limit the claims of the '764 patent.  The court first noted the limited circumstances in which the preamble may limit claim scope:

“Generally,” we have said, “the preamble does not limit the claims.”  Nonetheless, the preamble may be construed as limiting “if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” A preamble is not regarded as limiting, however, “when the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention.”  If the preamble “is reasonably susceptible to being construed to be merely duplicative of the limitations in the body of the claim (and was not clearly added to overcome a [prior art] rejection), we do not construe it to be a separate limitation.”  We have held that the preamble has no separate limiting effect if, for example, “the preamble merely gives a descriptive name to the set of limitations in the body of the claim that completely set forth the invention.”

Slip Op. at 8-9 (internal citations omitted).  After rejecting a prosecution history-based argument and the argument that the preamble phrase provided a necessary antecedent basis, the court determined that the phrase "does not embody an essential component of the invention":

Instead, the term “photoselective vaporization” is simply a descriptive name for the invention that is fully set forth in the bodies of the claims….The bodies of the asserted apparatus claims (claims 63-64) describe a structurally complete device, including a laser adapted to deliver “radiation at a wavelength and irradiance . . . sufficient to cause [tissue] vaporization[.]” The bodies of those claims identify the covered wavelengths by function (“sufficient to cause vaporization”), and nothing in the claim language suggests that the term “photoselective” further limits those wavelengths.

Slip Op. at 10 (internal citations omitted).

Judge Dyk disagreed.  After first noting the confusing and unclear nature of the court's jurisprudence on this issue, he suggested that the court should dispense with the current articulation and instead apply the rule that preambles always limit claims:

It seems to me that a rule recognizing that all preambles are limiting would make better sense and would better serve the interests of all concerned. There is, after all, little to be said in favor of allowing an applicant, in the claim drafting process, to include material in the claims that is not binding. If patentees are allowed to include material in the claim definitions that is not bind-ing, patentees can suggest or imply one position before the U.S. Patent & Trademark Office (“PTO”) to secure allowance of the patent on the theory that the preamble is limiting and another, inconsistent position in infringe-ment litigation on the theory that it is not limiting. Principles of fairness thus dictate that the patentee should be required to clearly define the claimed inven-tion’s scope. By creating a uniform rule that all pream-bles are limiting, we would ensure the patentee has the burden of drafting a patent that avoids confusion as to the scope of the claims….Neither the Supreme Court nor our court sitting en banc has ever addressed the preamble limitation issue. I think the time may have come for us to eliminate this vague and confusing rule.

Dissent at 3-4.  He then turned to the issue of whether the preamble phrase in this case limited the scope of the patent, and concluded that it did based on the prosecution history and what he viewed as a definition of the term in the Summary of the Invention.  He also disagreed with the majority that the district court's construction would be inconsistent with the specification. 

94 thoughts on “Preambles as Limitations

  1. Confused,

    The (observed) answer is: you are still confused.

    “almost always” – is still an application of brightline thinking. You are off track from the get-go.

    Step back and think to yourself for a moment about the words “merely” and “breathe life”. Would the claim stand on its own without the preamble? It’s a rather simple question. You are injecting complexity where there is none.

  2. So, according to your answer, the intended use almost always limits-if one must refrain from using a ref as prior art because it is not capable of performing the intended use of the claim, then intended uses ‘A device for’ is almost always limiting. Does it breathe life into the claim? Case law specifically states that if the intended use merely states what the invention is used for, it offers no patentable weight. If the body of the claim is broad enough to include a species within the breadth of the body of the claim, but excludes even one device which is incapable of performing the function of the intended use then the intended use limits almost 100% of the time. By excluding anything due to the recitation of the intended use is a priority indication that the intended use is limiting.

  3. Bonus to anyone in the audience for discovering how many layers of abstractions present in this message.

    yes, and you do need to count the open tag…

    close tag now.

  4. Confused – The answer (not mine, mind ya since Homey don’t give answers – so this be the observable answer),… The answer is yes, you are confused.

    Ya cannot apply a brightline rule as to when a preamble is limiting or not. It’s like one of those things the Supremes love – itza case by case detailed analysis of whether or not, in that particular case, the preamble breathes life into the claim.

    BTW, I could not help but notice that your lovely broom is made of straw – ya might have some obvious problems with that.

    Bonus to anyone in the audience for discovering how many layers of abstractions present in this message.

  5. Case law indicates that if the preamble merely indicates how the invention is to be used, then it is given no weight whatsoever. E.g.: A device for sweeping floors… Mpep/case law considers this non-limiting. However, case law also indicates that if the prior art device is capable of carrying out the intended use then it meets said intended use. But wait- why is that even a consideration since the intended use is not a limitation? The mpep also states that the intended use must be evaluated under 112 first-why, oh, now it’s a limitation again? Consider:
    Claim 1. A device for sweeping a floor comprising a broom handle. Does a broom handle (alone) meet the limitation of the claim? (of course a broom would be easy prior art here- this is theoretically speaking). If the answer is no (a broom handle does not meet the limitation of the claim) and is not a 102, then the intended use IS limiting. However- ‘for sweeping a floor’ is merely an intended use so should be given no weight correct?? So bottom line- if the prior art object cannot fulfil the intended use of the claim, is it available as prior art? (I realize, some may say ‘a broom handle could, in effect ‘sweep’- bit please consider that it could not w/o the broom attached).

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  7. raygrogan: “Just want to say thanks to IANAE for being ‘anti-patent’ which helps us understand what the heck examiners are finding wrong with our applications. I would far rather hear it here than in the next round of rejections. Some of us are a little slow in the logic department.”

    You’re slower than you think, if you think I’m anti-patent. That’s like calling someone “soft on crime” just because they want the innocent to go free.

    Granting patents that should not be granted because they have intentionally and avoidably vague claims is bad for the whole system. It is not “pro-patent”.

  8. Ned,

    An atomic bomb to kill a mosquito is effective too.

    Not all solutions are advisable.

    Now get busy on my new assignment for you – dig up those case cites on PMD.

  9. Anon, if the PTO were to adopt IANAE’s proposal, it would permanently fix the problem. Preambles would not be limiting at all.

  10. Just want to say thanks to IANAE for being “anti-patent” which helps us understand what the heck examiners are finding wrong with our applications. I would far rather hear it here than in the next round of rejections. Some of us are a little slow in the logic department.

    (This reminds me of drunk drivers yelling at the cops who save their lives by taking them off the road.)

    I made a similar pro se mistake by offering to put a limitation in the preamble and said in the same appeal (I won on other grounds, thankfully this one did not come up) that putting it there would not be a limitation and would only cause confusion.

    Now on this thread I see that if the limitation had been put in the preamble at the behest of the examiner it would have counted. Thanks for the main advice – if it is important put it in the body of the claim.

  11. It seems logical to adopt a rule that all claim terms be construed as limiting. This would clean up the shenanigans one encounters in some claims, and promote clarity and definiteness in claim language. Either that, or have Examiners ask Applicants which words (if any) of the preamble are to be considered in determining patentability. Either way, this will pretty much do away with preambles.

  12. Be Reasonable: “What basis of law will the examiner use to overcome the case law I present?”

    Two of them, actually.

    One is BRI, which has its own caselaw in support. The rules of claim construction are not the same in litigation as in prosecution, and if any claim limitation can be reasonably interpreted to mean nothing at all (i.e. “not limiting”), it is the examiner’s job to so interpret it.

    The other is 112. Since it is not settled that preambles are limiting in every case, the examiner may correctly assert that the scope of your claim is unclear – is that limitation being claimed or not?

    Or he could simply say “your arguments have been considered, but the limitation you rely on is not positively recited in the claim”, and then you’re back to square one.

    But really, who cares what his rejection is? Why are you fighting so hard to keep that limitation out of the body of the claim when you want it to be limiting anyway? Be reasonable, Be Reasonable, and make your simple, non-narrowing, clerical amendment.

  13. Ya gotta cite for our pal Kennie? Iza love to see if his writing style is better in court than on the blogs.

    No link, sorry. I got it through the PriorSmart subscription – I don’t think the link will work if I post it here. You can get it from PACER, of course.

    Ken’s complaint is not bad – I’ve seen much worse.

  14. I dont know about the Right (or is it (R)ight?) – kinda boring actually, as this be just a small part of the examiner’s not doin the job right the first time. If an examiner has time to make suggestions that merely pretty things up – he be spending time on the wrong stuff.

    Ya gotta cite for our pal Kennie? Iza love to see if his writing style is better in court than on the blogs.

  15. In other news, our very own Kenneth C. Brooks sued Procter & Gamble on Monday, in the Northern District of California. He wants $500 for every unit sold of Crest Glide Deep Clean Floss and Crest Glide Comfort Plus Floss Mint.

    I’m sure all of you will join me in wishing Ken the best of luck.

  16. It is perfectly legal to have limitations in the preamble of a claim.

    Indeed, it is every Actual Inventor’s Right to have limitations in the preamble of the claim.

  17. Ned,

    I might consider agreeing with you except that the facts get in the way. Your statement of “the preamble by default is not a limitation.” would indicate that there is a substantive default rule of law that terms in a preamble cannot be limiting.

    This simply is not so.

    Actually, the whole point of this thread is to pronounce the fact that there is no such default rule. It is perfectly legal to have limitations in the preamble of a claim. Of course, certain conditions must be met, but having met those conditions as I stated in my hypothetical Claim One above, I fully expect to receive my patent (all other legal conditions being met) regardless of whether an examiner has “suggested” movement of terms into the claim body or not.

    The examiner makes the suggestion. I refuse. What is the examiner going to do about it, as I would have cited Case Law with my polite decision to decline his “suggestion>/i>”? What basis of law will the examiner use to overcome the case law I present? Case law dictates that the example I provided is persuasive enough.

  18. Be reasonable, I too think that IANAE either works in or recently worked in the patent office. Because he declares that he is not examiner, he probably works or worked at the policy level.

    However on his suggestion that the patent office should ignore preambles while examining the claims is a good one. The justification to do so is exactly as he states – the preamble by default is not a limitation.

    To the extent that an applicant wishes to rely on a “limitation” in a preamble, the examiner could simply say that the applicant’s arguments about the limitation would be persuasive were the limitation set forth in the body of the claim, thereby providing the clear suggestion for an amendment.

  19. I think you’re right Reasonable. Because they knew all along this was about RICO. But they played it like it was Patents and the Claims, and how they were laid out.
    Any good Lawyer would have sent me in that direction. and not allowed 15 years of my life to be trashed. As soon as my Counsel knew they decided I wasn’t going to keep what was mine, they should have acted accordingly.

  20. IANAE,

    Let me spell this out for you, since you have such trouble with direct logic,

    I have an application with two independent claims. Claim One has a term in the preamble that clearly breathes life into the claim and is otherwise clearly essential. Claim Two has a term in the preamble that is clearly non-essential.

    Neither claim is unclear. Neither claim has any 112 issue in any way, shape, or form. For neither claim, can an examiner under any stretch of imagination or any body of law object to or reject the preamble term of Claim One (merely because it is in the preamble) and make me put that term into the body of the claim. In no way, shape or form can the examiner in any sense of “reasonable”, decide to arbitrarily ignore or effectively delete the critical preamble term of my claim. There is no legal, moral, ethical or otherwise foundation for such an action.

    The “may in my posts above describes the possibility as evidenced with these two claims, wherein a term in the preamble MAY range from being sometimes limiting and sometimes not. This example should make it crystal clear to you that the “may” in my posts do not describe the optionality within a claim.

    Enough with the word games. You are either obtuse, a do uche, or both.

    Lastly, you mentioned to someone’s question as to whether you worked for the Office with an emphatic denial. I posit that there is no way that you are any applicant’s representative given the sheer volume of your posts, and the overwhelmingly anti-applicant content of those posts. There would be no way for the misapplication and denial of laws that serve the applicants that you rant on and on about not to interfere in an ethical manner of you carrying out your duty to an applicant.

    You are a poser. And while it is not advisable for anyone to give credibility to legal points discussed on an anonymous blog, your misleading rhetoric sounds intelligent enough to cause confusion which can serve no legitimate end.

  21. Except for the fact that you have changed the claim by ignoring that portion which may be limiting.

    That’s right. One reasonable interpretation of a portion that may be limiting is that said portion is not limiting. If it’s not limiting, it can be ignored. That’s not changing the claim, it’s choosing the broader of two reasonable interpretations of the claim as drafted.

    The applicant does not have to do this as the law is clear

    The law is clear that the claim must be clear. What could possibly be less clear than a limitation that “may be limiting”? It’s just as bad as using the word “maybe” or “preferably” in the body of the claim. The examiner can’t tell whether or not you mean to claim it, and that’ll get you a 112 every time. 112, by the way, is the law.

  22. No, it’s perfectly logical. If the claim can reasonably be interpreted either broadly or narrowly, the examiner is to interpret it broadly.

    Except for the fact that you have changed the claim by ignoring that portion which may be limiting.

    If the applicant doesn’t like it, he can put the exact same language into the body of the claim

    The applicant does not have to do this as the law is clear – this flows directly from the “This is correct.” portion of my post. Do you have trouble with direct logic?

    The “may” is the range from claim to claim, not the optionality within a claim. Your word games are inappropriate here.

  23. “I would like to see a Fed Cir en banc decision on how to determine whether limitations in the body of the claim are so-called “intended use” limitations.”

    It isn’t very hard, just find words like “for” and “to”. What comes after (usually) them is often an intended use. The other way is to find every limitation in the claim that is blatantly a step being performed “right now”, a stand alone structural limitation, functional limitions that involve what something is functional to do (as opposed to what you’re intending it to do) and wherein clauses modifying one of the above. Whatever is left is probably an intended use.

  24. This is a logical non sequitur.

    No, it’s perfectly logical. If the claim can reasonably be interpreted either broadly or narrowly, the examiner is to interpret it broadly. The preamble might be limiting or not, depending on how you argue it in court. The examiner is not expected to apply technical jurisprudential rules of claim construction, which is one of the reasons for BRI. The claim is broader with the preamble non-limiting. The examiner owes it to the public to examine the broader meaning of that claim, for all the same reasons the BRI approach exists in the first place.

    If the applicant doesn’t like it, he can put the exact same language into the body of the claim, at which point the examiner will happily consider it.

    there is no fathomable way to say that it is proper to have a brightline rule to ignore what may be “limiting” words.

    If the words are unambiguously limiting, the examiner is required to consider them. If the words may be limiting, the claim may also be reasonably construed with those words non-limiting. That is a reasonable interpretation broader than the other reasonable interpretation, and therefore it is the correct interpretation for the examiner to make.

  25. The “legal certainty” established in this case and supported by an abundance of caselaw is that preambles are sometimes limiting and sometimes not.

    This is correct.

    Therefore, the broadest reasonable interpretation of a claim during examination is to ignore the preamble entirely

    This is a logical non sequitur.

    After just establishing that each case must be looked at individually, there is no fathomable way to say that it is proper to have a brightline rule to ignore what may be “limiting” words.

    The equivalent is saying that examiners may arbitrarily ignore any element or any limitation in a claim. Not only is this preposterous, it is the epitome of “unreasonableness“.

  26. I think “legal certainty” actually was established here.

    The “legal certainty” established in this case and supported by an abundance of caselaw is that preambles are sometimes limiting and sometimes not.

    Therefore, the broadest reasonable interpretation of a claim during examination is to ignore the preamble entirely, and the examiner is correct to insist that limitations from the preamble be amended into the body of the claim if such limitations are required for allowability.

    Furthermore, the applicant shouldn’t be bothered by such a request, since he put those limitations in the claim in the first place, and presumably he wouldn’t have put them in there for nothing. If he’s angling for examination of a narrow claim and litigation of a broad claim, too bad. That’s the opposite of how the system works.

  27. I would like to see a Fed Cir en banc decision on how to determine whether limitations in the body of the claim are so-called “intended use” limitations.

  28. it seems to me that it would unfairly penalize patentees whose patents were prosecuted in reliance on the understanding that preambles usually don’t limit.

    I don’t know about “unfairly”. What could they have hoped to gain by putting words in the claim in reliance on those words not limiting the scope of the claim?

    Except in rare cases where the claim simply doesn’t read well without adding some introductory “scenery” (unclaimed stuff around the claimed device/method, with which it interacts), the only reason those words could have been added to the preamble is for deliberate ambiguity or uncertain application of BRI.

    They don’t deserve our pity.

  29. I think “legal certainty” actually was established here.

    The judges, although split (and heaven knows that is not the first time, nor does it signify legal uncertainty), did come to a decision, one notably consonent with an abundance of case law.

    Have you lost your way, IANAE?

  30. I agree with Malcolm Mooney.

    Unless Judge Dyk’s rule is adopted on a forward-going basis only (i.e., only to patents *filed* after the decision issues), it seems to me that it would unfairly penalize patentees whose patents were prosecuted in reliance on the understanding that preambles usually don’t limit.

    Of course, the law is cloudy enough that there’s a limit to the extent that anyone can rely on it, but I still think there’s something there.

    I also agree with Peter Prosecutor’s comment: [ Then all future claims can have the format “An apparatus, comprising: X; Y; and Z.” or “A method, comprising: X; Y; and Z.” ]

  31. And the legal basis for this is….?

    Clearly and distinctly claiming, since there is evidently some legal uncertainty as to whether they’re limiting if left in the preamble.

    Same.

    Same.

  32. Have examiners insist that any limitations from the preamble that they consider during examination be amended into the body of the claim.

    And the legal basis for this is….?

    clearly like the statute requires.

    Same.

    It’s a good thing your opinion does not carry the force of law. Because that’s all that you are throwing around – your unsubstantiated opinion.

  33. I think it’s reasonably fair to treat the preamble as just a “descriptive name” for what follows, unless there’s a compelling reason to treat it differently, although I do also think that including specialist terminology such as “photoselective vaporization of tissue” is asking for trouble.

    It’s worth noting that the district court judgement was vacated and remanded on the basis that its finding of non-infringement depended entirely on its particular construction of the preamble terms, which the CAFC held to be non-limiting. There still seems to be room for a finding of non-infringement. As quoted from the patent in the dissent:

    “The wavelength used *according to the present invention* for BPH treatment should be strongly absorbed in the prostate tissue to help initiate and maintain tissue vaporization without creating deep tissue heating. The wavelength also *must* be minimally absorbed by the irrigant it used during the procedure, typically water.”

    That doesn’t seem to be true of the alleged infringement, which uses a significantly longer wavelength than what is suggested by the patent and which avoids significant absorption by the irrigant by putting the laser in contact with the tissue. There seems to be a potentially good argument that the alleged infringement is not taught by the patent; i.e. it’s an alternative solution to the same problem and a legitimate “design-around”.

    I dunno, go figure… maybe the subject matter was too close to the hearts of the panel (well, not literally close to their hearts, but you know what I mean…)

  34. Does anybody have a source for the first distinction made between the claim “preamble” and “body”?

    In a couple of seconds of searching I found Kropa v. Robie, a 1951 CCPA case that reviewed 37 older CCPA cases in its appendix, which decisions had addressed the issue previously, the text of which can be viewed here:

    link to cases.justia.com

  35. There is too much mischief that can occur by submitting a bloated preamble with the hope that it will be considered for patentability, but ignored for infringement.

    Have examiners insist that any limitations from the preamble that they consider during examination be amended into the body of the claim.

    The “patentees who have been leveraging the uncertainty” can go pound sand. They should have drafted their claims clearly like the statute requires.

  36. If you put a positive limitation in the preamble – then it is a limitation.

    Well, yes, but (1) that’s pretty much never needed, (2) most people don’t, and (3) long preambles do sometimes make it somewhat unclear what is being claimed.

    I can see a use for detailed preambles when you want to set out structure that is acted upon by the steps of a method. It’s still less awkward than “method” steps of providing structure. But other than that, you generally shouldn’t need more than “a method comprising” or “an apparatus comprising”.

  37. I agree with Dyk that all preambles should be limiting. There is too much mischief that can occur by submitting a bloated preamble with the hope that it will be considered for patentability, but ignored for infringement.

    I’m sure that patentees who have been leveraging the uncertainty regarding preambles in this manner will revolt if the law were changed.

    I’m also sure that the litigators would mourn the loss of the opportunity to argue about whether preambles “breath life” to the tune of tens of thousands of dollars.

    I generally prefer “an apparatus comprising,” “a method comprising,” “a system comprising” as preambles. If I need a more detailed preamble to provide antecedent basis for readability, I’ll use one with the full expectation that they’ll be limiting. But most of the time, detailed preambles are not necessary.

  38. If you put a positive limitation in the preamble – then it is a limitation. Who thought up the ridiculous rule that there is a difference created by the arbitraty distinction between the preamble and the claim body? If you don’t want a limitation in the claim, then don’t put it in. And as identified earlier, drafters will be more careful and stop glopping up the preamble with limitations, and then arguing they don’t matter when they try to enforce their claim outside its reasonable boundaries because they screwed up during prosecution. It will encourage everyone to use the statutory claim classes identified in 101 “process, machine, manufacture…etc, or else appreciate that the preamble creates a limiting effect.

  39. I think some common sense is needed here (which presumably means re-writing all rulebooks).

    Um, no Paulie – the re-writing attempt here was by the minority and then by the pundits who wanted to go all-or-nothing.

    The common sense thing is what the majority did and what the rulebooks now say – take each thing on its merits, read the claim as a whole. Construe.

    Malcolm – this is precisely one of those things the Supremes would scream at if ya’all tried to brightline rule it.

    Don’t pigeonhole. Don’t force something that depends on the individual situation. There is no need for it. Wanting things “easy” is not synonymous with wanting things right.

  40. I think some common sense is needed here (which presumably means re-writing all rulebooks).

    The first task is to read the claim as a whole. Then any features recited in the preamble have to be considered in the context of the claim as a whole. The claim recites certain method steps and the preamble sets out the result which is alleged to be obtained by carrying out that method. In this instance it is difficult to see how the result can be other than a technical feature of the claim.

    Can there be an inflexible rule here? In my submission not really, it is always necessary to read and understand the claim and then make a judgment.

  41. I get this nasty email, 10 days later, after I denied him power. I am told in so many words I tricked him? But I am not the person that hired him. Can you believe after all these lies I am supposed to swallow his line.
    And he is from New Hampshire.. you know ~LIVE ~FREE~ OR DIE~ Now where do It fit in, in this lieing spin? I ain’t free. I ain’t living. And my life has not been my own for 15 Years.
    The mistake you made was telling me I hired you? The nasty email… priceless. The lies wow. And you still think after I used my robot computer brain, I don’t finally get the design angle. an angle I haven’t even seen.

  42. Malcolm, your post immediately previous to mine illustrates well the exact issue I raised.

    And yes, I agree with Summerfield–ALWAYS LIMITING!

  43. An “always limiting” rule would have the arguable benefit of harmonisation with other jurisdictions.

    Good point.

  44. Mooney–

    I don’t believe that the open- and closed-ended issue is as easy to resolve as you suggest.

    Upon initial consideration, it seems to me that a cascade effect results, whereby whatever terms come before the endedness term(s) could reasonably be construed as preamble.

    Can you supply a simple example of where this doesn’t happen? i.e. where there is an endedness term(s) used in a claim using a preamble of one of the 2 forms you suggested?

  45. 6 lol wut? Why not just “A composition comprising:”?

    Laugh it up, fuzzball.

    I was thinking that “A composition, where said composition…” was more amenable to Jepson claims (e.g., A composition, wherein said composition is a bike comprising improvements, wherein said improvements include blah blah blah”).

    Whatever.

  46. “An “always limiting” rule would have the arguable benefit of harmonisation with other jurisdictions.”

    One the other hand a never limiting rule would have the unarguable benefit of not being harmonized with the other jurisdictions.

  47. I realise that none of you really care, but this is just another example where US patent law diverges from much of the rest of the civilised world. Most of us take the sensible view that if the inventor bothered to state something in a claim, then s/he should be held to it, regardless of the part of the claim in which the statement appears.

    Of course, “field of use” limitations should not be accorded any more weight than they deserve. But this does not seem to be causing any problems for the rest of the planet! The European approach, which is fairly representative of many non-US jurisdictions, is described in the EPO Guidelines for Examination.

    Many of us look on with bemused wonder at the seemingly limitless capacity of US courts and legislators to weave an ever more tangled web of patent confusion. At least Judge Dyk recognises this and is advocating for positive change.

    As other comments have pointed out, it probably makes little difference whether an “always limiting” or “never limiting” rule is applied. An “always limiting” rule would have the arguable benefit of harmonisation with other jurisdictions.

  48. “about how to interpret where preamble begins and ends”

    Lol wut? How about a per se rule that if someone can’t completely unabiguously tell where it begins and ends you get a 112 2nd right straight up ur ar se? How’s that for a “body of lawl”?

    “A composition, wherein said composition ”

    lol wut? Why not just “A composition comprising:”?

    “”Always limiting” = minimal preamble terms = limitations in the body of the claim = less room for confusion”

    LOL WUT? More claim construction = less room for confusion? Maybe you should ask the CAFC about that one.

    “Oh, I don’t know … how about the millions of patents and apps with preambles already in the claims? So unless “they” make such a rule non-retroactive … both options would be a mistake.”

    Yep.

  49. Steve The biggest problem with preambles never being limiting or always being so?

    Oh, I don’t know … how about the millions of patents and apps with preambles already in the claims?

    Indeed. Perhaps a statutory fix is in order.

    IBP Don’t you think there are problems with your 2 preambles WRT open- or closed-endedness??

    No. The applicant can use comprising or consisting in the body to his/her heart’s content.

  50. The biggest problem with preambles never being limiting or always being so?

    Oh, I don’t know … how about the millions of patents and apps with preambles already in the claims?

    Doh!

    So unless “they” make such a rule non-retroactive … both options would be a mistake.

    … and just one more important reason among many to keep those continuations coming …

  51. Mooney–

    Why even have that superfluous language? What purpose does it serve the applicant?

    Why not just have one preamble: “I claim: 1)…”

    Don’t you think there are problems with your 2 preambles WRT open- or closed-endedness?

    It could be easier if the preamble were always limiting and a “consisting of” or “comprising” is contained therein, in addition to whatever other limitations the applicant wishes.

  52. Never limiting = bodies of law about how to interpret where preamble begins and ends

    Again, there are two preambles: “A composition, wherein said composition …” and “A method, wherein said method …”.

    Everything else is the body of the claim and is limiting (subject to existing case law on claim construction).

    Easy.

  53. Mooney–

    “Never limiting = less claim construction = less room for confusion.”

    Try this: Never limiting = bodies of law about how to interpret where preamble begins and ends, if and when it forms part of the specification, how to construe terms, how much “weight” to give them versus terms in the body of the spec, etc.

    ————————————————-

    “Always limiting” = more claim construction = body of law arising about how to construe terms in preamble, how much “weight” to give them versus terms in the body of the claim, etc. ”

    Try this: “Always limiting” = minimal preamble terms = limitations in the body of the claim = less room for confusion

    ————————————————-

    “If one favors a policy of increased consistency in Examination and diminished uncertainty in claim construction, the best course is to move Applicants towards a more formal drafting paradigm where all claims begin and end with the words, “A composition” or “A method” and where every other term is a limitation.”

    Yes. Do you agree with this policy objective, given your previous suggestion that the preamble should never limit the claims?

  54. But my hourly rate reflects more than that.

    What audience is important enough to justify your hourly rate? The Federal Circuit?

    If I’m going to have one of my file histories torn apart in litigation, I’d much rather have filed one good response than two bad ones, and I’d much rather make a simple and clear amendment than argue at length on a point that won’t convince the examiner because I didn’t take the time to understand what his rejection really was. Incidentally, your client is also paying you to argue at length, and that’s one audience who would rather see you convince the examiner than not. And anyway, you won’t make it to litigation until you first get a patent granted.

    Say what you need to say, and say no more. But by all means say what you need to say.

  55. … it’s important to be able to recognize those times when they have a really good point that they didn’t put down on paper very effectively.

    I totally agree.

    Of course, it would be nice if they could be counted on to have the same sort of intuition about what we write, but at our hourly rates our clients should expect us to compensate for that with better quality writing.

    If the examiner was the only target audience for my writing, or even the most important target audience, then I wouldn’t hesitate to adapt my writing, or to amend it, to ensure that he or she is always promptly satisfied. But my hourly rate reflects more than that.

  56. I now understand that Examiners almost never make stuff up.

    Regardless of how frequently they make stuff up, it’s important to be able to recognize those times when they have a really good point that they didn’t put down on paper very effectively.

    Of course, it would be nice if they could be counted on to have the same sort of intuition about what we write, but at our hourly rates our clients should expect us to compensate for that with better quality writing.

  57. I used to think so, too. But now I have a much better understanding of how examiners think, and – more importantly – how they read.

    Then I must defer to your superior intellect. I now understand that Examiners almost never make stuff up.

  58. “That means you are turning into a virulently anti-patent extremist”

    Malcolm,

    Hardly, but the logic expressed in the “preamble is limiting/not limiting” case law brings out “this is nonsense” side.

  59. You damage your credibility when you suggest that every rejection is backed up by real reasoning.

    I don’t suggest that “every rejection” is backed up by real reasoning.

    I do, however, suggest that barring the occasional gross oversight, when an examiner ignores an entire claim limitation it’s his subtle way of telling you that your limitation was no limitation at all.

    But some rejections are outright fabrications. And some examiners are repeat offenders.

    I used to think so, too. But now I have a much better understanding of how examiners think, and – more importantly – how they read. Whenever an examiner completely misses a claim limitation, the first thing I do is check whether that limitation has a BRI that renders it meaningless.

    It turns out that remarkably few of those rejections are “outright fabrications”, or indeed written with any malice at all. Most are easily fixed by a simple claim amendment to clearly recite what the invention really is.

  60. They only do that when your claims are sloppy and full of intended use language or broad terms like “connected” that can mean anything at all.

    They ONLY do that when your claims are sloppy? Sorry, IANAE, this is where we part ways. You damage your credibility when you suggest that every rejection is backed up by real reasoning. Many of them are, even if the underlying logic is difficult to detect. But some rejections are outright fabrications. And some examiners are repeat offenders.

  61. IANAE lol.

    Did I tell a joke? Oh, I see it now. Yes, of course, go ahead and bill your client for the time. What on earth was I thinking?

  62. My gosh, we’re in lock step on this subject!

    That means you are turning into a virulently anti-patent extremist. ;)

  63. “the best course is to move Applicants towards a more formal drafting paradigm where all claims begin and end with the words, “A composition” or “A method” and where every other term is a limitation.”

    Malcolm,

    My gosh, we’re in lock step on this subject!

  64. IANAE,

    My approach is simply to avoid preamble beyond one word stating what class of subject matter I’m talking about. In fact, the only time I use preambles now is when I need to set the environment for the words in the body of the claim and that’s rare. I see no need to get involved in the “preamble” case law morass we currently have as to whether a particular preamble is or is not limiting. So I usually call a “composition” just a “composition.” Same with “method”, “process,” “device,” etc.

  65. I know some examiners would like to ignore every other word as not being a limitation.

    They only do that when your claims are sloppy and full of intended use language or broad terms like “connected” that can mean anything at all.

    Look at the limitations in your claim that the examiner has ignored. Call the examiner to talk about them. You’ll find out exactly why he chose those particular limitations to ignore. They’ve been drafted so broadly that they are not actually limiting, even if they seemed more specific to you when you wrote them.

    Even if you don’t bill your client for the time, it’ll be worth it just to have that conversation with an examiner. It’ll change your life.

  66. How about, “and where the remaining terms are all limitations.” I know some examiners would like to ignore every other word as not being a limitation.

  67. see no practical difference between the preamble NEVER or ALWAYS being limiting

    Never limiting = less claim construction = less room for confusion.

    “Always limiting” = more claim construction = body of law arising about how to construe terms in preamble, how much “weight” to give them versus terms in the body of the claim, etc.

    I understand that Applicants can and will try to add statements of intended into the body of their claims if they can’t do it in the preamble. Let them. If one favors a policy of increased consistency in Examination and diminished uncertainty in claim construction, the best course is to move Applicants towards a more formal drafting paradigm where all claims begin and end with the words, “A composition” or “A method” and where every other term is a limitation.

  68. If it is never limiting, why put it down? It would serve no functional purpose insofar as the applicant is concerned, would be superfluous verbiage, and therefore useless.

    Just like the same intended use language if it were within the body of the claim. Or words like “connected” that don’t really mean anything.

    The preamble isn’t usually-not-limiting because preambles are special. It’s usually-not-limiting because it’s almost always written in intended use language or hopelessly broad terms that doesn’t add anything meaningful to the claim.

    That’s why the current rule is that it’s only limiting if it adds something meaningful to the claim. Which in this case, it didn’t.

  69. Mooney–

    I see no practical difference between the preamble NEVER or ALWAYS being limiting.

    If it is never limiting, why put it down? It would serve no functional purpose insofar as the applicant is concerned, would be superfluous verbiage, and therefore useless.

    If it is always limiting, why put it down? Why not just incorporate the limitations into the body of the claim for ease of drafting and analysis?

    The ALWAYS limiting rule is logically more appealing to me. An applicant starts with a blank sheet, and generates ALL the content. The baseline condition is that the preamble does not exist, so the baseline rule should be that the preamble has no limiting content.

    It is entirely up to the applicant–if you want it to mean something limiting, put it down, and if not, don’t. A bright-line rule can be both helpful and fair when it is known in advance, when it presents no practical difference from its binary opposite, and when comportment with the rule is entirely within the knowing control of the party affected by the rule–the applicant.

  70. EG: The only time ignoring the preamble makes sense is if that preamble is a statement of intended use (e.g., “An electrolyte composition”), in which case the preamble is meaningless for both validity and infringement purposes.

    What if the preamble says the method is for photoselective vaporization of tissue, but the body of the claim says nothing about photoselectivity? Seems to me, the claim itself is to general vaporization of tissue, and only the preamble suggests that the claimed method might in particular be used in a photoselective way.

    I think most preambles are considered non-limiting precisely because most preambles are intended use. Unless the preamble recites actual structure that is related to by other elements in the body of the claim, the preamble is nothing more than narrative. Useful for classification and for assisting the understanding of a reader unfamiliar with patent-speak, but of no legal effect. If the claim is the invention, the preamble is the background of the invention.

  71. Decent ruling but I really think that this court needs to consider a lil something that recently went to the USSC: 1 0 1. Shining a LAZAR BEEM ON A DUDE is, hmmm, idk, pretty close to a few blatantly abstract ideas I can think of.

    Dyk seems to want to make nearly every case have a binding “intended use” limitation right up in the preamble. Nonsense Dyk, do away with the limiting effect, not grant it all the time.

  72. So one question might be why applicants (or their attorneys) ever include things in the preamble in the first place.

    One reason oft mentioned is to distract. If you can get someone thinking in terms of the preamble then it might be easy to overlook more “creative” interpretations of the claims.

    Similar thing can be said for “field of use” restrictions (i.e., “a computer comprising… for use in a system comprising… “). Is the stuff in the “for use in a system comprising” limiting or not?

    A second reason: the appearance of consistency. What if one of the claims had been written in “An apparatus comprising” form with the “photoselective” limitation followed by a claim in the form in dispute? It is somewhat hard for me to imagine that an examiner would flag one but not the other.

    I would say that both these reasons make for bad policy. It very much fails the public notice requirement. It complicates an already complicated area. It adds needless analysis. And so on.

    What redeeming value can their possibly be?

  73. I frankly agree with the dissenting opinion on this one. The case law on when preambles are “limiting or not” is one royal mess, and conflicts with the All Elements/All Limitations Rule. The only time ignoring the preamble makes sense is if that preamble is a statement of intended use (e.g., “An electrolyte composition”), in which case the preamble is meaningless for both validity and infringement purposes.

    Also, the preamble is usually considered limiting if it provides antecedent basis for terms present in the body of the claim. In claims as issue here (e.g., Claim 1), the preamble “photoselective vaporization of tissue” provides antecedent basis for two terms used in the body of those claims (“the tissue” and “vaporization”). In fact, if the preamble “photoselective vaporization of tissue” isn’t considered limiting in these Claims, then why shouldn’t those Claims should go down under 35 USC 112, 2nd paragraph as being indefinite?

  74. I hope Judge Dyk’s rule gets adopted. Then all future claims can have the format “An apparatus, comprising: X; Y; and Z.” or “A method, comprising: X; Y; and Z.” Nothing limiting there! Too bad if the OIPE uses the preamble to classify the invention.

  75. If patentees are allowed to include material in the claim definitions that is not bind-ing, patentees can suggest or imply one position before the U.S. Patent & Trademark Office (“PTO”) to secure allowance of the patent on the theory that the preamble is limiting and another, inconsistent position in infringe-ment litigation on the theory that it is not limiting.

    I’m not convinced. Partly because I’ve had examiners ask me to amend limitations from the preamble into the body of the claim, so I don’t think they’re being fooled. But mostly because it’s pretty simple for an examiner to know what parts of the claim are limiting when the claim is neatly divided into “before ‘comprising'” and “after ‘comprising'”. Let the PTO always consider preambles non-limiting (which they probably already do anyway, and which is basically BRI), and if the patentee wants a narrower claim in court let him hire a good lawyer.

    Malcolm: This case is a perfect example of why preambles should never be used to limit claims. Majority got it right.

    This. If photoselective was supposed to mean something that specific, that specific meaning should have been in the body of the claim. Or at least in the preamble. Recite the irrigant and the particular photoselectivity that is the actual invention. Or chalk another one up to “invention claimed too broadly and too vaguely, claim also covers prior art”.

  76. Along with product-by-process claims (now fixed, for the most part), this was always top in my list of issues that the Federal Circuit needs to address.

    After first noting the confusing and unclear nature of the court’s jurisprudence on this issue, he suggested that the court should dispense with the current articulation and instead apply the rule that preambles always limit claims

    Should be “never limit claims.” This case is a perfect example of why preambles should never be used to limit claims. Majority got it right.

    ping didn’t this dude get the memo from the Supremes? Brightline rules are baaaad.

    Not all of them.

  77. Claim 31 should never had been allowed in the first place. Using a laser to vaporize tissue? Adjusting the power, beam size, and treatment area to accomplish vaporization? All obvious!

  78. ‘necessary to give life, meaning, and vitality’

    Iza think this be applied liberally at times, and to more than just the preamble.

    After first noting the confusing and unclear nature of the court’s jurisprudence on this issue

    What’s that all about…?

    apply the rule that preambles always limit claims

    Whoa Nelly – didn’t this dude get the memo from the Supremes? Brightline rules are baaaad.

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