When drafting a claim, or analysis a claim, each word has to be given its plain meaning and MUST be considered. Therefore, whether preamble constitutes any weight? Or What purpose does it serve in the claim structure? These two questions are going to be “answered” in this short note.
The second question can be answered very easily and mostly agreed amount patent community.
A preamble is an introductory phrase of a claim and it might:
(1) summarize the invention
(2) summarize its relation to the prior art
(3) summarize its intended use or properties, and
(4) constitute a limitation of the claimed device or process.
The first question is not as trivial, in fact, MPEG 2111.02 says whether a preamble limits a claim is made on a case by case basis so that it is kind of close the door for us. Thus, we need to look at some of the case law and cross our finger to hope they will shine some light on the subject matter.
Following are some of the case law decisions, and we have simplified the wording for easy reading.
Determining whether a preamble constitutes a limitation of the claimed apparatus or process should be based on the facts of each case in light of:
a. The overall form of the claim
b. The invention as disclosed in the specification
c. The invention as illuminated in the prosecution history
Applied Materials, Inc. v. Advanced Semiconductor Materials, 40 USPQ2d 1481, 1488 (Fed. Cir. 1996).
The preamble is essential to understand limitations or terms in the body of the claim.
Pitney Bowes, Inc. v. Hewlett-Packard Co.,51 USPQ2d 1161, 1165-66 (Fed. Cir.1999).
The body of the claim depends on the preamble phrase for antecedent basis.
Bell Communications Research, Inc., v. Vitalink Communications Corp.,34 USPQ2d1816, 1820 (Fed. Cir. 1995).
The preamble recites additional structure or steps underscored as important by the specification.
Corning Glass Works v. Sumitomo Elec. U.S.A., Inc, 9 USPQ2d 1962, 1966 (Fed. Cir.1989).
The preamble is relied upon during prosecution to distinguish the claimed invention from the prior art.
Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 58 USPQ2d 1508, 1513 (Fed. Cir. 2001).
The preamble recites essential structure or steps, or if it is “necessary to give life, meaning and vitality to a claim.”
Pitney Bowes, 51 USPQ2d at 1165-66; Kropa v. Robie, 88 UPSQ 478,480-481(CCPA 1951).
The body of the claim following the preamble is a self-contained description of the structure and does not depend on the preamble for completeness.
Kropa v. Robie, 88 UPSQ at 480-481; Rowe, 42 USPQ2d at 1553; and IMS Technology Inc. v. Haas Automation Inc., 54 USPQ2d 1129, 1137 (Fed. Cir.2000).
A preamble that recites merely the use or purpose of the claimed invention generally does not limit the claims.
Catalina, 62 USPQ2d at 1785.
At first, it is kind of confusing, but it should be “fine” to conclude two points, 1. when there are antecedent and basis limitation in the body of the claim, which refers to the preamble, the preamble constitutes weight. 2. If the preamble is necessary to understand the invention, it constitutes weight. Hope this will help or serve as a guideline while you draft the claim.
编辑于 2019-8-9 著作权归作者所有
