What is in the preamble of a patent claim? And, can the
contents of the preamble influence the claim examination process?
Ever since the US Supreme Court ruling in Alice Corporation
Pty. Ltd. v. CLS Bank International, et al., patent claims have
faced an elevated possibility of being rejected under 35 USC
§101 as being directed to an abstract idea, or being not
significantly more than an instruction to implement an abstract
idea on a generic computer. The preamble introduces the
limitations of the patent claim, and in so doing, sets the stage
for interpretation of the claim and examination of the claim.
Often, the preamble acts as a sort of title for the claim,
and suggests a focus or primary subject matter for the claim.
We patent practitioners have seen, in Office actions from the USPTO
(United States Patent and Trademark Office), rejections of claims
in which the material in the claim preamble is paraphrased or even
quoted word for word as an abstract idea to which the claim is
allegedly directed. This suggests a strategy for claim
preambles. We may consider writing claim preambles that set
forth just enough of an abstract idea to where there is plenty of
material in the claim limitations, outside of the claim preamble,
that can act as the "significantly more" that the Alice
ruling suggests claims that have patent eligible subject matter
should have. Too narrow a claim preamble might leave not
enough in the claim limitations to convince an Examiner that the
claim has significantly more than an instruction to implement the
abstract idea (as set forth in the preamble) on a generic computer.
Too broad a claim preamble, for example claiming just A
method, comprising:, or A system, comprising:, does not set forth
anything that the Examiner could grab as an alleged abstract idea
and so does not shape the examination process.
An article, "Judge Lourie Suggests Jepson Claims For
Patent Eligibility", by Courtenay C. Brinckerhoff
(December 8, 2015), reviews the suggestion that returning to Jepson
format claims might be helpful in patent eligibility.
Although this suggestion is made with regard to diagnostic
methods in medical innovations, it might apply to other types of
claims. Generally, a Jepson format claim (to review) is of
the form, An improved [article, method, system, etc., having
certain features, often a quite detailed description], wherein the
improvement comprises: [the limitations of claim]. This has a
similar effect of setting forth the subject matter of the claim, by
introducing in a preamble a brief description of subject matter
from which the remaining claim limitations distinguish.
So, in both of the above ideas for preambles, the first of setting
forth in the claim preamble a just right level of detail to frame
an abstract idea, the second of setting forth in the claim preamble
a known subject, presumably with patent eligible subject matter,
the presentation of the remaining claim limitations has a similar
effect. The remaining claim limitations distinguish from the
material in the claim preamble. During examination, if the
claim is rejected as patent ineligible, directed to an abstract
idea without significantly more, the argument is then to show that
the remaining claim limitations constitute the significantly
more.
And that is where inventiveness comes in. When the claim
limitations have tangible aspects, and show inventiveness (for
example, as argued in the Office action response under 35 USC
§102 and 103 rejections), this can be argued as showing
substantially or significantly more than an instruction to
implement an alleged abstract idea on a generic computer, in the
claims. This can be a stronger argument, if the preamble of
the claim shapes perception of what the abstract idea is. It
can then be argued in a straightforward manner that the
distinguishing limitations, showing the inventiveness, are not
shown anywhere in the abstract idea in and of itself. The
abstract idea, per se, doesn't say how the generic computer
implements the abstract idea, and doesn't say anything about
the new distinguishing limitations, so these distinguishing
limitations are substantially more. If the Examiner says
otherwise, this can be challenged as not factually shown by the
Examiner. In the Jepson format, one could even argue that the
preamble shows the claim is directed to patent eligible subject
matter, and the further limitations narrow that and show an
improvement to a known process or article, which is patentable
subject matter. This is all part of the art of patenting.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.