Claim Preamble Is Limiting When It Recites Essential Structure of the Invention

AIPLATalk170Bicon v. Straumann (Fed. Cir. 2006, 05–1168).

In a dispute over a dental implant, the CAFC today determined that the preamble of the asserted claims should be seen as limiting the claim scope.

While it is true that preamble language is often treated as nonlimiting in nature, it is not unusual for this court to treat preamble language as limiting, as it is in this case.

Here, the claimed preamble was quite extensive, and was written as follows:

An emergence cuff member for use in preserving the interdental papilla during the procedure of placing an abutment on a root member implanted in the alveolar bone of a patient in which [a] the abutment has a frusto-spherical basal surface portion and [b] a conical surface portion having a selected height extending therefrom comprising . . .

Under the rule expounded in RIM v. NTP, the preamble is limiting “if it recites essential structure that is important to the invention or necessary to give meaning to the claim.”  Here, the court found that the preamble “recites structural features . . . [and] it is apparent that the claim drafter chose to use both the preamble and the body of the claim to define the subject matter of the claimed invention.”


6 thoughts on “Claim Preamble Is Limiting When It Recites Essential Structure of the Invention

  1. 6

    Claim Preamble Is Limiting When It Recites Essential Structure of the Invention

    Patently-O: Patent Law Blog: Claim Preamble Is Limiting When It Recites Essential Structure of the Invention

  2. 5

    This decision appears to be consistent with the existing precedent–which is codified in MPEP 2111.01:
    “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.” Pitney Bowes, Inc. v. Hewlett-Packard
    Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165-66 (Fed. Cir. 1999)

  3. 4

    My own approach is to refer back to preamble elements in the body of the claim if I intend them to be limiting, i.e. if there’s a widget in the preamble and ‘said widget’ in the body then the widget can’t be read out of the claim.

  4. 3

    I think there are simple enough ways to use a preamble without reciting “essential structure” in the preamble. In the example posted by Jeckyl, the preamble could recite “A method for treatment.” Paring down the preamble to just “A method” seems like a good strategy. My only question is whether an examiner could question the utility of a claim that just recites “A method.”

  5. 2

    This is a useful case for any foreign patent attorneys filing or preparing patent specifications for filing international patent applications. Too often, we consider the specification in terms of our own receiving offices.

  6. 1

    One solution would be to eliminate the preamble when claiming. I’ve seen this done at several firms, and in-house. However, would this render the claim indefinite? For example, a claim could read “A method comprising administering compound X to an individual in need thereof.” Assume the compound and administration are novel, have utility described in the spec., and are non-obvious. This eliminates “essential structure” in the claim. But my belief is that this could be considered indefinite for lacking a preamble — is the claim above a method for treating cancer by administering compound X or is it a method for treating baldness or for curing the hiccups?

    Perhaps a preamble is required, but one should just be careful to avoid drafting limiting structure?

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