Court Overturns § 102 Rejection Due to Limiting Preamble

The Federal Circuit overturned a PTAB decision affirming anticipation rejections under 35 U.S.C. § 102 of patent claims directed to “the construction of travel trailers” because the the PTAB “erred in concluding [the preamble] does not limit the scope of the claims.” In Re: Fought et al., No. 2019-1127 (Fed. Cir. 2019) (See U.S. Patent Application PG-Pub. No. 2014/0008932). The court held the preamble is limiting because “it serves as antecedent basis for a term appearing in the body of a claim.”

The court noted that although the “claim[s] do[] 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.” Claims 1 and 2 are reproduced here:

  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 PTAB affirmed the examiner rejections of “claim 1 as anticipated by U.S. Patent No. 4,049,311 (Dietrich), which describes a conventional truck trailer…and claim 2 as anticipated by U.S. Patent No. 2,752,864 (McDougal), which describes a bulkhead for shipping compartments.” The PTAB concluded that “the preamble term ‘travel trailer” is a mere statement of intended use that does not limit the claim.” However, the court, in citing C.W. Zumbiel Co., Inc. v. Kappos, noted that “‘the preamble constitutes a limitation when the claim(s) depend on it for antecedent basis.’” 702 F.3d 1371, 1385 (Fed. Cir. 2012). Accordingly, the court found the preamble was limiting because “the limitation reciting ‘the travel trailer’ relies on the preamble’s recitation of ‘a travel trailer’ for antecedent basis.”

Additionally, the PTAB found that the extrinsic evidence’s “distinction of travel trailers from other recreational vehicles in terms of towability” and the “explanation that recreational vehicles and travel trailers have living space rather than cargo space” are statements of intended use. However, the court disagreed noting that towability and living space are “structural difference[s], not an intended use.” Accordingly, the court found that the preamble is a structural limitation of the claims because “[j]ust as one would not confuse a house with a warehouse, no one would confuse a travel trailer with a truck trailer.” Since the cited prior art failed to anticipate the claims in light of the limiting preamble, the court reversed the PTAB’s decision affirming the Examiner’s rejection of the ‘932 application

Lessons for Practice

Typically, the preamble of a patent claim is not limiting, but placing claim elements in the preamble can result in the preamble being construed as a substantive limitation. This case illustrates that placing claim elements in the preamble can create uncertainty in the claim scope, which may require litigation to resolve. To reduce potential uncertainty in the claim scope that can result from placing claim elements in the preamble, claim elements should be placed in the body of the claim whenever possible.