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[Robert K S]

(Somewhat apropos of this thread...)

After receiving junk rejections arguing preambles to be non-limiting in several different cases, my advice to pracititioners is to give up bothering to write preambles at all anymore.  At this point, the only preambles acceptable to the Patent Office appear to be:

• A process (or method) comprising:
• A machine (or device, or apparatus, or manufacture) comprising:
• A composition of matter comprising:

And that's it.  Try to put any other words in your preamble, and they won't matter to the examiner.  The examiner will pull up some BS prior art that doesn't read on your claims at all and will sophistically cite (or, as in one of my cases, mis-cite) to a court decision he or she read one line about in MPEP 2111.02, in full neglect of the rest of the guidance given in that section and with complete ignorance about the actual opinion being cited to.

It hardly matters why examiners are being trained to make rejections like this, or that the rejections are bogus.  The only way around them is to make sure nothing substantive goes in the preamble, or to repeat the preamble:

• A medical device comprising:
  a medical device comprising...

It's ridiculous to me, but this is exactly what examiners seem to be demanding at this point.

[Isaac]

And that's it.  Try to put any other words in your preamble, and they won't matter to the examiner.

This is a bit of a tough spot.  MPEP 2111.02 has guidance and talks about situations where a preamble will or will not be limiting.  The section described factors to consider.  Those factors include the fact that the applicant has relied on preamble during prosecution.  In theory, your arguments are not just arguments but are facts that tip the balance toward a limiting preamble.

Of course you can always amend the claims to echo the limitation in the claims, but the amendment is simply going to get you moved to final or won't be entered leading to an RCE.  Of course a cynic would note that the person weighing the factors also is the person that is going to have to issue a new non-final office action if he buys your arguments.  That cynic would also note that the standard for review at the BPAI is based on substantial evidence.  It ain't de novo.  I'm sure that if I were examining, I think I'd be highly likely to stand by my rejection in these types of cases.

  The examiner will pull up some BS prior art that doesn't read on your claims at all and will sophistically cite (or, as in one of my cases, mis-cite) to a court decision he or she read one line about in MPEP 2111.02, in full neglect of the rest of the guidance given in that section and with complete ignorance about the actual opinion being cited to.

I'm not quite that cynical...

[jc4patents]

   The wording of the preamble poses the same challenge as the wording
of the claim elements - in all of these you must use great caution and
skill to best define the limitations of your invention versus the outstanding art.
Sometimes a brief preamble is warranted - other times you may want other
phrasing.

    I don't think Examiners or the Patent Office are other consideration but
they basically have nothing to do
with the practitioner's responsibility to properly cast the claim language.

[Isaac]

• A medical device comprising:
  a medical device comprising...

How is the fact that the device is a medical device going to affect the claimed structure?  I don't see how reciting medical device in the body of the claim gets you a patentable limitation.

[vman11]

Well, I hear it helps circumvent 101 rejections and helps to distinctly point out a tangible use. This may be more important for a certain type of invention than others, also, this (describing utility without limiting with structure) may be more challenging for particular invention types.

An apparatus for mowing lawns comprising:

[Robert K S]

How is the fact that the device is a medical device going to affect the claimed structure?  I don't see how reciting medical device in the body of the claim gets you a patentable limitation.

You have precisely illustrated the faulty thinking of the Patent Office, which they believe allows them to pull up a prior art reference incapable of being used as a medical device (or whatever your invention is) and count it against you.  Imagine you write a claim:

An improved angioplasty balloon comprising:
feature 1,
feature 2, and
feature 3.

You can imagine features 1-3 to be structural in nature, or compositional, or whatever.  But, you have written the claims in good faith that there exists no such angioplasty balloon with your unique features in the prior art.  Perhaps your features relate to an improved way of inflating the balloon that is gentler on artery walls, or a balloon that is less likely to rupture during a procedure--I'm just making up hypotheticals.  Your balloon could save tens of thousands of lives a year, and your startup company needs this patent in order to secure financial backing.  You, and all the heart patients your invention might help treat, are counting on the Patent Office to do its job and not stall with BS rejections.

The examiner then issues a 102 and presents as prior art a zeppelin design having features 1, 2, and 3.  In the text of the rejection, the Examiner notes "where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation."

"That's absurd," you think, "the Patent Office wouldn't do that."

Brother, they do it every day.

The fact that they do it wrongfully, without understanding the case law or what's written in the MPEP, does not matter.  They will have forced you to amend, and now they can issue you a Final and force you to appeal.  Or, even if that does not happen, they will have at the very least wasted a prosecution cycle, time that might have been the difference between life and death for your technology, as you may have missed a market entry opportunity or a capitalization opportunity.

This is why I say, forget about putting anything substantive in the preamble.  The way the Patent Office (mis)treats preambles, they can do no good.

[Wiscagent]

You could just as easily claim:

A device comprising:
feature 0 [whatever attrubutes define an angioplasty balloon],
feature 1,
feature 2, and
feature 3.

Problem solved.  Well, okay it's not quite so simple.  But the point is to put into the body of the claim whatever features, attributes, or characteristics that you would have implied in the preamble.

[Robert K S]

Thanks, Richard, but you have only repeated the gist of the original post (and the subject of this thread).

[JustAnotherExaminer]

How is the fact that the device is a medical device going to affect the claimed structure?  I don't see how reciting medical device in the body of the claim gets you a patentable limitation.

An improved angioplasty balloon comprising:
feature 1,
feature 2, and
feature 3.

...

The fact that they do it wrongfully, without understanding the case law or what's written in the MPEP, does not matter.  They will have forced you to amend, and now they can issue you a Final and force you to appeal.  Or, even if that does not happen, they will have at the very least wasted a prosecution cycle, time that might have been the difference between life and death for your technology, as you may have missed a market entry opportunity or a capitalization opportunity.

The examiner should always treat limitations in the preamble, as they are defined in applicant's specification.  There's a 95% chance the specification drafter did not define "improved angioplasty balloon" in the specification.  In which case, the examiner accurately presumes that an "improved angioplasty balloon" is anything with features 1, 2, and 3.  Of the 5% where it is defined, 99% will define it as "anything that comprises features 1, 2, and 3".

Think from the examiner's perspective. Everyday they examine a different patent application directed towards an "angioplasty balloon".  Every one of those applications claims it slightly differently.  And, if it is defined in the specification, every application defines it slightly differently.  So every time the examiner sees the phrase "angioplasty balloon" in an application, he asks himself, "what's an angioplasty balloon?" Well, it's whatever the applicant defines it as.  The problem with nowadays specifications is that they rarely ever define critical phrases used throughout the claims.  It's so bad, actually, that I always just assume nothing is ever defined and do a second non-final for the .0001% of the time my assumption is wrong.

[Robert K S]

There's a 95% chance the specification drafter did not define "improved angioplasty balloon" in the specification.

There's a 99% chance the examiner didn't look at the applicant's specification to check if applicant defined it or not.

But in this particular instance, it shouldn't matter whether the applicant defined "angioplasty balloon" in the spec, as an angioplasty balloon is a device known in the art, and no person skilled in the art would confuse an angioplasty balloon for a zeppelin.

Well, it's whatever the applicant defines it as.

No, it's whatever the common meaning of the term is, unless the applicant has defined the term differently.  If the examiner doesn't know what a basic vanilla angioplasty balloon comprises, there are textbooks and web resources and probably even a very good Wikipedia article.

I always just assume nothing is ever defined...

Mm hm.

[JustAnotherExaminer]

No, it's whatever the common meaning of the term is, unless the applicant has defined the term differently.  If the examiner doesn't know what a basic vanilla angioplasty balloon comprises, there are textbooks and web resources and probably even a very good Wikipedia article.

And which one of those definitions, which assuredly vary in scope, do we incorporate into your claim language? I have a form paragraph for your form paragraph, let's go make some money.

[Robert K S]

And which one of those definitions, which assuredly vary in scope, do we incorporate into your claim language?

You shouldn't be "incorporating" anything into claim language; you should be giving claim terms their broadest reasonable interpretation.  Anyway, this is a point that is completely distinct and separate from the point that is the subject of this thread.

[JimIvey]

The law seems reasonably clear to me.  If I argue language in the preamble in overcoming a rejection, I've made that language of the preamble limiting.  Done.  I can't argue preamble language in overcoming 102/103 rejections and then later assert the very same language is not limiting.  Why that doesn't resolve the issue immediately every time in the examiner corps is beyond me.

Regards.

[Isaac]

Why that doesn't resolve the issue immediately every time in the examiner corps is beyond me.

Because being persuaded by Applicants argument means issuing a new rejection not in response to applicant's amendment, while simply not being persuaded means that the applicant will amend the claim? 

[JustAnotherExaminer]

The law seems reasonably clear to me.  If I argue language in the preamble in overcoming a rejection, I've made that language of the preamble limiting.  Done.  I can't argue preamble language in overcoming 102/103 rejections and then later assert the very same language is not limiting.  Why that doesn't resolve the issue immediately every time in the examiner corps is beyond me.

Regards.

Cause then I can't go final when I treat your new "limitation" that was never officially amended into the claims?  Although, "amendment" is technically your entire response, including arguments.  And "necessitated by arguments" fulfills "necessitated by amendment" requirement?  Gotta love how horribly written the MPEP is.