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[Robert K S]

"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."

I've never had an examiner who agreed with me on what that meant, a preamble giving life, meaning and vitality to a claim.  Compounding the confusion, I even once had an examiner tell me that the claim had to breathe life into the preamble.  

I'd be curious what a preamble giving life, meaning, and vitality to a claim means to you, dablueman.  Myself, I think the claim examples I gave earlier in this thread are good demonstrations.  If an examiner is using a zeppelin reference to try to reject claims on an angioplasty balloon just because the examiner is disregarding the preamble, then the preamble is giving life to the claim, because the claim becomes incomprehensible without the preamble, as evidenced by the introduction of the totally off-base zeppelin art.

BTW, perhaps in addition to the other cases he just cited, the case law Jim is looking for is Catalina v. Coolsavings, as discussed earlier in this thread, and the more recent case which further interpreted it, which I linked to a few posts above.  

[JimIvey]

BTW, perhaps in addition to the other cases he just cited, the case law Jim is looking for is Catalina v. Coolsavings, as discussed earlier in this thread, and the more recent case which further interpreted it, which I linked to a few posts above.  

Yeah, I'm not so fond of that case (except for Newman's dissent, again).  The court didn't find clear reliance on the preamble language -- note that I've been discussing clear, explicit reliance here.  Yet, the language in question was added by amendment.  The added language would most certainly be limiting under Festo.  Why should claim language be ignored for determining claim validity and be limiting for determining infringement?

Newman's point about the presumption of validity and striving to construe the claims to as to support that presumption is a good one, too.

But, the bottom line is pretty clear.  Language in the preamble is limiting if the applicant says so on the record during prosecution.

Regards.

[dablueman]

I've never had an examiner who agreed with me on what that meant, a preamble giving life, meaning and vitality to a claim.  Compounding the confusion, I even once had an examiner tell me that the claim had to breathe life into the preamble.  

I'd be curious what a preamble giving life, meaning, and vitality to a claim means to you, dablueman.

The vagueness of the phrase is why I like it. It means whatever you want it to mean. Sorry I can't really tell you what it means to me without giving you real world examples. To paraphrase Justice Stewart, I shall not today attempt further to define what I understand to be a limiting preamble . . .but I know it when I see it.

As for statements made during prosecution I general approach it the way Mr. Ivey is saying. If you tell me on the record that the preamble is limiting, then I'm fine with that because of prosecution history estoppel. The way I look at it, I've done my job because when you state the preamble is limiting that narrows the scope of the claim, thus saving the public from a claim for more than what the inventor is entitled. I'm not going to argue with the applicant about whether it is limiting, though how it limits the scope is up for debate in most cases.

Preambles are interesting things because I've had cases ranging from no preamble to over a page and a half of preamble language. Each case is different, but if I'm treating a preamble as limiting on the FAOM then I do state it on the record. Otherwise I generally ignore the preamble language until challenged by the applicant.

[JimIvey]

Dablueman,

Your approach sounds sensible.  However, one of the points raised much earlier in this topic is how examiners treat responses that rely on preamble language.  Assuming you didn't think the preamble language was limiting and the applicant explicitly relied on it in response and that you have to cite an entirely new reference for that preamble language, do you send a second non-final Office Action?  How would you justify a final Office Action that was not necessitated by amendment?

What I usually see is a final Office Action in which the examiner refuses to give the preamble language any patentable weight. 

Sorry.  Don't mean to pick on you.  Just curious how this issue plays out in an examiner's mind. I think that, if I were an examiner, I'd want to address any preamble language in the first Office Action so that making the second one final would be easier.

Regards.

[Simpletown]

However, one of the points raised much earlier in this topic is how examiners treat responses that rely on preamble language.

You know the answer already as you posted in your response. If they didn't do it right the first time...they should go non-final. If they do go final you should call them and then their SPE because they aren't doing their job. Honestly I know what I think doesn't matter to the "law" but I believe that preambles should ALWAYS be limiting. It boggles my mind how applicants can add all sorts of things to the claim and yet the legal standard can boil down to...ehh...I don't care what they put in the claim when I interpret it the way I want to. If you put it in the claim…it should limit the claim. Unfortunately this isn’t the standard, so an examiners best recourse is to ALWAYS say the preamble means nothing and ALWAYS reject the claim as if the preamble is limiting. This way applicant is appraised of the weird legal standard applied to preamble language and can fix it by a statement on the record or a claim amendment, yet they also get a reasonable examination of their claims as well.

[newb]

This may sound stupid but is a "transitional phrase" stated in the MPEP such as comprising or consisting of necessary?  What if a claim is written without using the "transitional" phrases given by the MPEP and uses wherein or comprises?  Does it matter?

[Robert K S]

This may sound stupid but is a "transitional phrase" stated in the MPEP such as comprising or consisting of necessary?  What if a claim is written without using the "transitional" phrases given by the MPEP and uses wherein or comprises?  Does it matter?

The most famous examples are the single-element composition of matter claims in the applications of Seaborg.  But also take a look at the first claim at issue in this post to Patently-O today.  I suppose you could argue that "by" is a transitional phrase, just a very short one.

[JimIvey]

Does it matter?

There are few phrases in claims that I think the tradition ought to be adhered to.  And these are among those.

Generally speaking, the elements recited in a claim can be exhaustive or not.  In other words, if an accused device includes something not recited in a claim, it can still infringe if "comprises" is the transition and does not infringe if "consists essentially of" is the transition.

If you don't use either of those transitions, are the elements recited in the claim exhaustive?  I don't know.  I don't know how one could know with any level of certainty. 

I suppose one could fashion their own transitions in which such is explicit and clear, such as "the method including at least" or "the method including without more".

But, I'd stick with the traditional transitions here as they have well-defined and precise meanings.  Using anything else infuses your claims with uncertainty -- something I strive to avoid.

Regards.

[Robert K S]

The recent non-precedential CAFC opinion of In re Taylor (Fed. Cir., No. 2012-1006, June 14, 2012) addressed this issue:

The Board thus correctly discerned that the preambles of [Appellant's] claims 1 and 58 are not limiting, and [Appellant] Taylor misapprehends Catalina and related cases in his arguments to the contrary. Catalina set forth “some guideposts” for evaluating whether a particular claim’s preamble limits claim scope; among those, we included the general proposition that “clear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art transforms the preamble into a claim limitation because such reliance indicates use of the preamble to define, in part, the claimed invention.” 289 F.3d at 808. Taylor seizes on that “guidepost” as categorically determinative, arguing that Catalina compels the examiner, the Board, and ultimately this court to construe the disputed preamble terms as limiting because he sought to distinguish [the cited prior art reference of] Akkaway before the examiner based in part on those terms. But Catalina, and indeed all of the other decisions that Taylor cites, arose in the context of infringement litigation, where prosecution is closed and the court’s task is to divine the meaning of issued claims under a narrower interpretive standard. Here, where prosecution remains open and Taylor retains the option of amending the claim as needed, the Board correctly rejected Taylor’s rigid reading of Catalina to conclude that the preambles of claims 1 and 58 of the ’507 Application are not limiting under the broadest reasonable interpretation of those claims.

The CAFC affirmed the BPAI's decision sustaining the rejections of all Taylor's claims.

So much for Catalina.

My original contention, which is the subject of this thread, is only reaffirmed by this CAFC decision.  NO PATENT CLAIM SHOULD EVER BE WRITTEN WITH A PREAMBLE (beyond "A method comprising...", "A system comprising...", etc.).  SUBSTANTIVE PREAMBLES ARE TOTALLY USELESS FOR ANY PURPOSE.