“Travel Trailer” Preamble has Meaning — Case Rolls Back to the PTO

by Dennis Crouch

In re Fought (Fed. Cir. 2019)

This is a nice short USPTO claim construction case. Heartland RV (Thor Indus.) filed its patent application back in 2012 claiming a movable-wall-structure for a travel trailer.  In the example given in the patent, the wall might divide the back “garage portion” of the trailer from the front “living quarters.”  The wall can then be adjusted according to the size of your ride.

Two pending claims:

1. A travel trailer having a first and second compartment therein separated by a wall assembly which is movable so as to alter the relative dimensions of the first and second compartments without altering the exterior appearance of the travel trailer.

2. A travel trailer having a front wall, rear wall, and two side walls with a first and a second compartment therein, those compartments being separated by a wall assembly, the wall assembly having a forward wall and at least one side member, the side member being located adjacent to and movable in parallel with respect to a side wall of the trailer, and the wall assembly being moved along the longitudinal length of the trailer by drive means positioned between the side member and the side wall.

The examiner rejected issued initial and final rejections in 2014 and 2015 respectively.  The PTAB then sided with the examiner in its 2018 decision — holding that the claims were anticipated by two old prior art references.  Claim 1 by U.S. Patent No. 4,049,311 (Dietrich); and Claim 2 by U.S. Patent No. 2,752,864 (McDougal).

The problem, is that neither prior art reference is directed to a “travel trailer” but rather to more conventional shipping compartments as shown below.

Although the are directed to a modified “travel trailer,” the PTAB gave no weight to that preamble term — finding that the broadest reasonable interpretation of the claims left that term as a mere non-limiting intended use.

On appeal, the Federal Circuit has reversed and remanded — holding that the preamble term is limiting because it serves as an antecedent basis for terms found in the claims.  The Federal Circuit also noted that a “travel trailer” is known in the industry as a particular type of towable RV — not simply an intended use of a trailer.

Probably the single most-popular class of towable RV is the Travel Trailer. Spanning 13 to 35 feet long, travel trailers are designed to be towed by cars, vans, and pickup trucks with only the addition of a frame or bumper mounted hitch. Single axles are common, but dual and even triple axles may be found on larger units to carry the load.

Quote from Woodall’s RV Buyer’s Guide.

On remand, the Board will now have to decide whether to move forward with an obviousness rejection sua sponte or send the case back to the examiner for review.

= = = =

The court noted two other claim construction tidbits:

PHOSITA: Claims are construed from the frame of reference of a person of ordinary skill in the art. As per its usual approach, the Board did not articulare the level of skill in the art that should be applied in this case.  On appeal, the Federal Circuit found no error with that approach. “Unless the patentee places the level of ordinary skill in the art in dispute and explains with particularity how the dispute would alter the outcome, neither the Board nor the examiner need articulate the level of ordinary skill in the art.”

PREAMBLE: Note the claim above is not written in the traditional form: [Preamble] comprising [Body].  Here, the applicant argued that the claim does not include a preamble at all because there is no transition phrase.  On appeal, the Federal Circuit quickly rejected that suggestion. “Though this claim does not use the typical claim language (comprising) which denotes the transition between the preamble and the body, the word “having” performs the same role here.”

15 thoughts on ““Travel Trailer” Preamble has Meaning — Case Rolls Back to the PTO

  1. 7

    So if the preamble is limiting, then the PTO tanks these claims as obvious instead of anticipated by the 60 year old art?

    Is that about the end of this application?

    Wondering why the examiner didn’t do alternative rejections including the obviousness in the final.

    1. 7.1

      No, this is not the end of the application. You can, if you are interested, review the on-going prosecution at the USPTO Public PAIR site.

  2. 6

    The practical take-home point here is that if you’re faced with a bad non-analogous art rejection, you might be able to amend the preamble of your claim to distinguish from the cited reference based on the logic of this case.

  3. 5

    So if a claim doesn’t use one of the three traditional transition phrases, how is the claim interpreted? Assumed open-ended?

    1. 5.1

      I think it’s the old “breathe life and meaning” test for determining whether the preamble is limiting, which in most cases means looking into whether the preamble provides antecedent basis for words in the body of the claim.

      In terms of whether it’s a closed or open claim, I would suppose it depends on the particular “non traditional” words that are used, and the prosecution history etc.

      1. 5.1.1

        I agreed with the “breathing life and meaning” test to test whether a preamble is meaning, I think the Federal Circuit also thought the subject matter itself, travel trailer, was “breathing life and meaning”.

  4. 4

    How long until this incredibly cr @p decision is cited by a patentee or applicant to argue “limiting structure” in a software case?

    I say less than a week.

  5. 3

    Cr @p claims and some typical nonsense from Moore to keep them alive … for what purpose?

    I love the bit about how “living quarters” is deemed to be a meaningful “structural limitation” in this context.

    1. 3.1

      Can someone let the wealthy enbubbled CAFC judges know that people have lived in the back of semi truck trailers for a long time?

      Judge Moore is again relying heavily on her sheltered life experiences to create new law. Funny how wealthy white people cant resist themselves …

  6. 2

    Did the examiner, Board or Fed.Cir. give a properly narrow and potentially art-distinguishing 112(f) interpretation of the claim element “drive means positioned between the side member and the side wall?”

    The prior art drawing above shows the detachable trailer of a tracker-trailer. Note the standard small parking wheels on the trailer shown extending down behind the tractor drive wheels. What is the basis for any non-analogous art argument here?

    1. 2.1

      No idea what you are trying to get at it here, Paul. As far as I can tell, the “drive means” refers to the means by which the dividing wall is rendered movable with respect to the length of the trailer compartment. Note that claim 1 doesn’t even recite that (obvious, pre-existing) element.

  7. 1

    I love any argument premised on “our patent attorney doesn’t know how to write a proper claim, therefore we win”

    1. 1.1

      The patent attorney in question comes from an older school of thought that claims should be written as a straight sentence with no indentations or other segregations. He or she likely received his claim draft training from other older patent attorneys schooled in the law, rather than the administrative state of the PTO. Unlike newer patent attorneys who only know how to draft claims based on what the PTO tells them to do when drafting a claim, and believe the MPEP is law.

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