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[NJ Patent1]

All cybercolleagues:  Well, we may be pulling in several different - but perhaps related - directions in this thread.  Mea culpa if I contributed to confusing things.  My comment re: oil dispenser vs. popcorn dispenser was only to show the length an Examiner may/can go to find 102 art.  Per others, I agree the NAA argument has no place in a 102 debate.  To do otherwise would essentially countenance use (or field of use) claims.  Preamble be damned, we don’t do that in the US.  BUT what is available under 102 is, subject to some temporal and co-ownership limitations, available under 103.  No?  So by my reasoning, the oil dispenser - were it not anticipating - might well have properly been used in a 103 rejection.  At the risk of confusing things even more, I’ll borrow a term form copyright law - “level of abstraction”.  Bird feeder? Or taking the eagle’s view, just a measuring-mixing container with adjustable measuring chambers?  (That was a bad pun). 

Analogous art is a “threshold”.  All the discussion of KSR supra is well and good, but we don’t get to conduct our obviousness analysis until we decide what the “ prior art” is.  After, and only after, that is decided, do we go to Graham, leaving Klein et al. behind.  As others posted, read the NAA standard in NAA cases, not motivation and the like from obviousness cases.  Per my previous post, I think we have to be careful with words.  Field of the invention, field of the endeavor, field of use, and so forth.  Maybe they are just tautologies thanks to some judge’s need for a rhetorical flourish, or maybe they indeed belong to different analytical frameworks.

My opinion. As much pain as it causes me as an advocate prosecuting applications, an expansive view of AA, like “broadest reasonable construction of the claims” serves a legitimate policy objective - minimize improvidently granted patents.  Putting on my opinion drafter’s hat, there are already enough of them.  But NAA lives and I'll continue to take a shot at it. 

[JimIvey]

FWIW, I think NAA only applies under 103, not 102.

Of course.  By definition, all 102 art anticipates.

So, for the different technical arts to even be relevant, it seems that the technical art must be recited in the claim for NAA to come up -- unless it comes up in the reverse doctrine of equivalents (haven't seen a case on that in a very long time).

You've completely lost me.  I understand your argument that the field of invention must be recited in the claims.  What does have to do with the distinction between 102 and 103?

It's simple, I think.  If I recite "a vessel for mixing solutions comprising", an IV solution mixing vessel is 102 prior art and NAA is inapplicable (more accurately, superfluous).  If I recite "a vessel for mixing bird feeder nectar comprising", an IV solution mixing bag is not 102 prior art.  It's only applicable if the examiner asserts that it was obvious at the time the invention was made to adapt or use the IV solution mixing vessel to mix bird feeder nectar.

I recite "a bird feeder nectar mixer comprising: ...", that's not an avowed purpose; that's a claim limitation

But it's in the preamble, and therefore may not be given patentable weight unless you can successfully argue that it should be given patentable weight. 

Well, to be fair, the whole quote is:

I don't think that's very clear.  In essence, it says that the test for obviousness is what's obvious.  However, if I recite "a bird feeder nectar mixer comprising: ...", that's not an avowed purpose; that's a claim limitation -- especially if I've used that language to distinguish an IV bag during prosecution.

As I've stated in here many times, clear reliance on preamble language during prosecution makes the preamble language limiting -- both under US patent law and the MPEP, though not universally (or even marginally) followed by the examining corps.

It's also worth noting in academic discussions like this that the preamble/body distinction is meaningless as language from the preamble can always be moved to the body by amendment.  The distinction is only relevant procedurally -- when you'd rather not amend for procedural reasons.

Regards.

[JustAnotherExaminer]

The problem I have is, what if a secondary reference explicitly recites the modification to get the claimed field of endeavor?

You're claiming a bird feeding nectar mixer and explicitly recite the field of endeavor in the claim language.

In a 103 rejection, I cite: refA- an IV bag reference that anticipates everything except the field of endeavor, and RefB- a secondary reference that teaches that IV bags can be used (maybe in a totally unrelated way to what's actually claimed) to feed birds.

You argue refA is non-analogous art with respect to the claimed invention.  And you'd have a solid argument according to current case law precedent, as it's not addressing same problem or in similar field of endeavor.

But, if you compare refA to refB with respect to NAA, they're both analogous (IV bags). Thus a combination is plausible and, assuming proper motivation, they render the claimed invention obvious.  Ergo it's a proper rejection in my opinion that should withstand any non-analogous art arguments because the combination is two analogous arts.


Another thing about current NAA case law is that some of the cases (not all) require an importation of limitations from the specification/background into the claim language.

In fact, my de facto response to any non-analogous art argument is i) I must give claims broadest reasonable interpretation consistent with specification without importing limitations into the claim language; ii) I construe analogous arts based on claimed invention. And then describe how my art fits in the analogous-scope of the claimed invention.

[JimIvey]

In a 103 rejection, I cite: refA- an IV bag reference that anticipates everything except the field of endeavor, and RefB- a secondary reference that teaches that IV bags can be used (maybe in a totally unrelated way to what's actually claimed) to feed birds.

If you had that, I'd say you have some good evidence that the arts are not so non-analogous.  If you could show that reference B suggests modification of reference A to produce an infringing variation, I'd say you have a good argument for obviousness and I'd be scrounging around to find other good limitations to put in the claims.

FWIW, I never see even an allegation that whatever proffered motivation to combine was even known to ordinary artisans at the time the invention was made, let alone any sort of showing or even Official Notice.  Seeing an actual reference is just a distant dream at this point. 

If you make all your obviousness rejections that solid or otherwise concede non-obviousness, I'd love to have you examine all my applications.  Well, I have concerns regarding some of your views on 101 law, so don't go grabbing up all my cases just yet.  ;-)

Regards.

[NJ Patent1]

I thumbed-through the case squibs in Chisum’s “Patent Law Digest” (LexisNexis).  There are a number of cases in which the preamble was held limiting, and a (slightly greater?) number in which it was not.  The only “common thread” this cursory study revealed is: CAFC says it depends on the facts of each case.  Per JimIvey, reliance on the preamble weights in favor of finding the preamble limiting.  But it is just one “fact”

Concerning amending claims to incorporate the putative limitation in the preamble into the body of the claim; in my experience in the chem. / pharma arts, this is often though to do w/o converting my composition claim to a method claim - invoking a “constructive election” objection.  If the structure (chem. structure in my art) is known, all I have is a new “use” for that structure, couched in “method” terms. 

JimIvey wrote:  “If I recite "a vessel for mixing bird feeder nectar comprising", an IV solution mixing bag is not 102 prior art”.  I’m not sure I can agree.  As I recall, that motor oil dispenser was 102 against the popcorn dispenser.  But I don’t have the claim in front of me.  The holding is stuck in my head bcs I encountered the case early in my new career and was dumbfounded.  If I can dig it out I’ll share the cite (circa 1997?). 

[khazzah]

As I've stated in here many times, clear reliance on preamble language during prosecution makes the preamble language limiting -- both under US patent law and the MPEP, though not universally (or even marginally) followed by the examining corps.

Gotcha. I saw you mentioned "statements made in prosecution" but didn't realize you were relying on this to make the argument. I understand now.

[JimIvey]

Per JimIvey, reliance on the preamble weights in favor of finding the preamble limiting.  But it is just one “fact”

I'd be interested to see any case (especially post-Festo) that finds preamble language, on which the applicant relied in getting a claim allowed, not limiting.  At the very least, I'm quite certain that the patent owner could never successfully argue infringement in spite of contradictory preamble language if the claim had been allowed in view of the patent owner's prior statements that the preamble language is limiting.

If preamble language can be limiting for infringement analysis and simultaneous not limiting for invalidity analysis, wouldn't we need two Markman hearings?  Or at least two results from any Markman hearing?  It seems we'd need claim interpretation for infringement and separate claim interpretation for invalidity.  I don't believe that's consistent with US patent law today.

Regards.

[Isaac]

If preamble language can be limiting for infringement analysis and simultaneous not limiting for invalidity analysis, wouldn't we need two Markman hearings?  Or at least two results from any Markman hearing?  It seems we'd need claim interpretation for infringement and separate claim interpretation for invalidity.  I don't believe that's consistent with US patent law today.

There probably would not need to be two such hearings for this reason.   I think you are right that the parties are stuck with one ruling on whether the claim preamble is limiting.   Unfortunately, it is very difficult to get those claims with limiting preambles off the examiner's desk so that they can be involved in litigation.  Most examiner's ignore attorney arguments that the preamble is limiting.   And in cases where doing so merely requires that the examiner find another reference and not go final, it may not be in the applicant's best interest to have the argument on record.

But there can be situations where validity and infringement analysis are not the same.  For example, product by process claims are interpreted broadly for invalidity and more narrowly for infringement.

[NJ Patent1]

Claims are construed the same for (in)validity and (non)infringement.  Rockwell Intn’l v. US, 147 F.3d 1358 (CAFC 1998).  But Isaac points-out an interesting wrinkle. 

Concerning post-Festo cases in which, applicant’s arguments in prosecution notwithstanding, a recitation in a preamble was held non-limiting:  I checked the 2011 supplement to Patent Law Digest.  I don’t see a case 100% on point.  The closest appears to be American Medical Sys. v. Biolitec, 618 F.3d 1354 (CAFC 2010).  The DC erroneously relied on repeated statements in the spec to find a the preamble limiting. 

I DO find at least two cases in which (successful) reliance on the preamble in prosecution supported a holding that statements in the preamble were limitations:  Bass Pro v. Cabela’s (CAFC 2007) and Haliburton Energy v. M1-LLC (CAFC 2008).  However, neither case appears to involve the limiting effect vel non of a statement of intended use or “field” of use. 

[ChrisWhewell]

I'm late to the discussion but thought it worth sharing this:

http://openjurist.org/422/f2d/1285/geo-meyer-manufacturing-co-v-san-marino-electronic-corporation

, particularly the third paragraph under the heading:  "Finding of Fact 9 and Conclusion of Law 5"

&, under finding of fact 10, the language:  "...employ similar elements in a similar relationship for a similar purpose." might be useful to consider.

[JimIvey]

I'm late to the discussion but thought it worth sharing this:

http://openjurist.org/422/f2d/1285/geo-meyer-manufacturing-co-v-san-marino-electronic-corporation

While I appreciate the contribution, I think it's worth noting that it's a 9th Circuit case from 1970.  That was back around the golden age of the doctrine of equivalents; prosecution history estoppel was pretty soft back then.

My point is that I can't reconcile Festo with a holding that preamble language is not limiting in view of a claim being allowed through clear reliance on that preamble language for patentability reasons.

Here's how I can reconcile the notion that clear reliance on preamble language during prosecution can be just one factor among several in determining whether the preamble language is liming:  it's sufficient but not essential.  In other words, clear reliance on preamble language makes the language limiting.  Period.  However, other factors can also make the preamble language limiting notwithstanding absence of clear reliance on the preamble language during prosecution.

Currently, that's the only interpretation that makes sense to me.

Regards.

[ChrisWhewell]

I tend to avoid using preamble limitations, seeing it as one less thing to lock horns with an examiner on.

Are there instances where its absolutely necessary to recite claim features in the preamble ?

[JimIvey]

I tend to avoid using preamble limitations, seeing it as one less thing to lock horns with an examiner on.

Are there instances where its absolutely necessary to recite claim features in the preamble ?

That's an interesting question.  I use preamble language without problems.  Trying to figure out why it's working form me, it seems that I use the preamble to provide some antecedent basis for elements and perhaps to provide some sort of introduction of what's happening in the claim.  I think that I repeat anything important from the preamble in the claim body.

I don't shy away from preamble language and I haven't had problems with it for a very long time.  I've been doing it so long that it's more or less automatic.

Perhaps it's the arts in which I work -- nearly always software.  Perhaps I'm doing something right.

Looking at the issue from the other side, I'm not sure why any claim language (preamble or otherwise) should not be limiting.  I find it frustrating that I take time to careful craft a claim reciting, quite elegantly IMHO, a complex system and then have the examiner say none of those words matter and cite a hoola-hoop as anticipatory prior art.  Okay, that's an exaggeration, but hopefully you get my point.

I've actually had an examiner (many years ago) reject my claims under Section 101 saying something pretty close to the following:  "Computer programs per se are non-statutory.  A computer-implemented method is statutory.  Applicant has cleverly cast the claims as reciting a computer-implemented method, but it is clear what Applicant is really trying to claim -- a computer program per se."  How do you respond to that?  I think I said something to the fact that we'd amend the claims to recite a computer-implemented method but the claims already recite that.  I think I also assured the examiner that the words of the claims really mean what they appear to mean.

Honestly, if I wanted to cover blah, blah, blah, I'd actually write "blah, blah, blah."

Yeah, I may have to address this post in deposition some day.  ..sigh..  Luckily, the law is what it is and my thoughts and subjective intent in writing an application don't count.

Regards.

[patentatt]

I've actually had an examiner (many years ago) reject my claims under Section 101 saying something pretty close to the following:  "Computer programs per se are non-statutory.  A computer-implemented method is statutory.  Applicant has cleverly cast the claims as reciting a computer-implemented method, but it is clear what Applicant is really trying to claim -- a computer program per se."  How do you respond to that?  I think I said something to the fact that we'd amend the claims to recite a computer-implemented method but the claims already recite that.  I think I also assured the examiner that the words of the claims really mean what they appear to mean.

This is very similar to what happened in Cybersource.

[ChrisWhewell]

I tend to avoid using preamble limitations, seeing it as one less thing to lock horns with an examiner on.

Are there instances where its absolutely necessary to recite claim features in the preamble ?

That's an interesting question.  

I'd respect a definitive showing of instances where the presence of features/limitations are indispensable in a claim preamble; such might help us more clearly see aspects of what the law is, which is always a nice thing.  In my earlier reply I'd had a statement to the effect that, perhaps in your art field things are different ... and it was a little pleasing to see you iterate it in your message.