33 thoughts on “Claim interpretation

  1. 12

    So a claim term in the preamble would not need to “breathe life” into the claim? But that’s so poetic.

  2. 11

    It does seem kind of silly to have rule that part of the claims does not always count. I certainly don’t see the purpose of it.

  3. 10

    Then we wouldn’t have this ridiculous fiction we have today, unsupported by Statute (112), that the preamble is somehow different than the rest of the claim. “Field of use” and “functional” issues would still exist, as they do in the body of the claim, and would be treated no different. The world would not fall apart. Most claims would survive, if they were properly drafted in the first place, and would be interpreted in the manner they were originally drafted to cover – rather than some broadened, after-the-fact (“oops”) manner. Any structural limitation, no matter where inserted, would have a limiting effect on the claim. Claim drafting would revert to the notice function it is supposed to provide.

  4. 9

    It seems to me that the applicant already has some degree of control over whether or not the claim preamble is limiting or not by how the claim preamble and corresponding or not claim body terminology are written. Not even to mention the applicant’s choice of using a claim preamble or not. If the ambiguity of a preamble being a limitation or not was deliberate, or, if was just poor claim drafting, should either be rewarded?

    1. 9.1

      Another reason for some folks to hate IPRs, since if an IPR has to make a preamble claim interpretation it will have to do so soon after the IPR starts. Whereas in a D.C. that ambiguity, and the freedom to argue it either way, can last until a Markman, or even later, running up discovery and other litigation expenses if the case is not settled.

    2. 9.2

      Good timing, as in the immediately above [subsequent] blog on a Fed. Cir. decision on a preamble effect argument, Dennis notes that “The court writes “Acceleration’s poor claim drafting will not be an excuse for it to infuse confusion into its claim scope.” “

  5. 8

    If there were literally a new rule(s), there would follow new kinds of claims, and claim construction case law would need to readjust according to both the new rule and the new claim forms.

    There would be a lot of chaos, but possibly a lot of creativity, and evolution, and perhaps a greater multiplicity of claim forms than that seen currently.

  6. 7

    We’d also see applicants drafting claims with the patentability “baked in”, i.e., claims reciting “wherein said method is new, non-obvious, enabled, fully supported by the specification as filed, and eligible for patenting.”

    The fact that we don’t see this is in every claim is how you know that written claims can always be “dissected.” It’s just a fundamental issue that arises from the decision to use words to describe stuff.

    1. 7.1

      Your attempt at elevating “dissection” is noted.

  7. 6

    I am assuming this means “intended uses” would be limiting.

    It would certainly be easier to get a patent in the mechanical arts, but it would allow competitors in the same space to weasel around infringement much more easily.

    A device for doing X could just be marketed as doing Y to avoid infringement. Even if the consumer uses the device for X, there is also no secondary infringement as the maker is not inducing the use for X. The use for Y is also a substantially non infringing one.

    This is why the current policy is a good one. Better to issue enforceable patents.

  8. 5

    In terms of everything must be given patentable weight?

    I’ve had applicants attempt to override KSR by claiming a particular motivation to do something, so at a minimum it would throw obviousness into disorder.

    1. 5.1

      That’s an interesting wrinkle quite different than my original take on the issue presented.

    2. 5.2

      You mean a limitation like “5% aluminum” becomes “5% aluminum in order to improve ductile properties”?

      So prior art with 5% aluminum in order to improve conductivity wouldn’t anticipate?

      Interesting concept.

      1. 5.2.1

        “But our 5% aluminum was to save manufacturing costs relative to the 6.5% aluminum option.”

        1. 5.2.1.1

          “Totally different from saving manufacturing costs relative to the 7% option described in the non-analogous art cited by the Examiner.”

      2. 5.2.2

        No I mean sending a message with the intent that the message cause x or be interpreted as y

        1. 5.2.2.1

          Message…

          …causing…

          Perhaps “message” is too loaded of a word (Anthropomorphication and all)

        2. 5.2.2.2

          sending a message with the intent

          Intent freezes below 25 degrees Celsius — a big problem for message senders until computers came along and changed everything.

    3. 5.3

      Isn’t a new use claim essentially based on a motivation to do something different with something previously known?

  9. 4

    I expect that a lot more claims (perhaps upward of 70% of granted claims) would fail §112 as either insufficiently described or unclear if we were to treat everything (including intended uses, functional effects, etc) as limitations that must be taken seriously. People would learn this quickly, and adjust drafting style accordingly pretty accordingly, so the prospective effect would not be too awful. The retrospective effect, however, would be a blood bath.

    1. 4.1

      What do you think that the prospective effect would be:

      Massive specification bloat?
      “Cleaner” and necessarily broader claims?
      Combination?
      Something else?

  10. 3

    What would happen if we had a new rule that all parts of a claim were seen as limiting, not just the “body” and the “preamble” sometimes?

    I’m not sure I understand or appreciate the complete scope of the question being asked here.

    Generally speaking, all the parts of a claim are limiting, including the preamble in many cases. Do you have specific limitations in mind?

    For instance, if you want “statements of intended use” to be “limiting”, then what would happen is that people would try to protect uses of prior art compositions/articles using those statements (just as they do now). Same answer with respect to functional limitations appended to prior art compositions. How these limitations interact with the statutes (e.g., has possession of the function/use been shown in a manner that would satisfy 112; does the recited function raise 101 issues) would not change too much.

    The so-called printed matter doctrine would be nullified and replaced with a standard eligibility analysis.

    Bottom line is that the underlying policy drivers behind current judge-made doctrines that say “ignore this limitation” would push the statutes into doing the work they were intended to do.

    1. 3.1

      The so-called printed matter doctrine would be nullified and replaced with a standard eligibility analysis.

      Can you (cogently) unwind that?

      In other words, please do more than state the conclusion that you feel.

      Thanks.

      1. 3.1.1

        I don’t know what more to say. The so-called PMD teaches that you ignore certain claim limitations except when you don’t. When the doctrine teaches one to ignore the limitations (e.g., an old kit with a set of “new” non-obvious instructions), the eligibility issues presented by the claim usually disappear and the claim is pretty much invariably deemed to be anticipated or obvious.

        DC’s hypothetical is that you don’t ignore those limitations, ever. So the eligibility problem is raised front and center and, as I noted, 101 will do the statutory work that it was intended to do without the silly judge-created mask of the so-called PMD.

        1. 3.1.1.1

          The so-called PMD teaches that you ignore certain claim limitations except when you don’t.

          LOL – Maybe you should try actually picking up my easy to understand Set Theory explication of the exceptions to the judicial doctrine of printed matter….

          Your “silly” is in how you continuously try to spin the doctrine.

          1. 3.1.1.1.1

            Maybe stop pointing that gun at your face and take a deep breath, Billy. I’m just responding to DC’s hypothetical, and to your question about my response.

            1. 3.1.1.1.1.1

              And I am not pointing any gun at my face and noting that my past explication – which you refused to engage on the merits with – is directly on point to your ramblings here.

              Maybe heed my suggestions instead of descending into your usual mindless ad hominem….

  11. 2

    The world would not fall apart. Claims are drafted with the expectation that a potential infringer is going to assert, reasonably, that all parts of a claim are limiting.

    PS, Dennis, could you look into getting a favicon.ico for this website? It would be very helpful.

  12. 1

    Not much. But to some extent, claims would become harder to understand because helpful information will be left out of the preamble.

    More claims would be directed to “An apparatus comprising:” and “A Method comprising:”

    1. 1.1

      From a prosecution perspective that is how more and more claims are drafted today since the PTO generally refuses to consider preambles as limiting. Thus, I would predict the opposite effect from the one you suggest. A drafter would feel safe putting limitations in the preamble knowing that they would be taken into account during examination.

      1. 1.1.1

        I see not one way or the other, given that the preamble itself is flexible and may — or may not — be as either of you indicate.

        To me, my first impression of the thread (the one not indicated by Random above), was that the issue presented was merely another “go” at removing the current flexibility afforded by the fact that preambles CAN be used in more than one manner.

        There is a time and place for Robert’s identified “no preamble,” just as there is a time and place for Robert’s suspected move towards detailed preambles.

        I take the thrust here as some non-patent writer’s view that flexibility is “bad,” and a bright line rule must be better.

    2. 1.2

      I don’t know that claims would be harder to understand if the motivation were clearly stated in the detailed description.

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