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Preamble term was a structural limitation of the claims

| Nicole R. Townes

IN RE: DAVID FOUGHT, MARTIN CLANTON

Before Newman, Moore, and Chen. Appeal from the Patent Trial and Appeal Board.

Summary: A preamble description of the invention as a “travel trailer” was a structural limitation.  Further, unless placed in dispute by the patentee, the Patent Trial and Appeal Board (PTAB) does not have to state the level of ordinary skill in the art in its decision.

Inventors David Fought and Martin Clanton appealed the Examiner’s decision refusing their application as anticipated by a reference which described a conventional truck trailer such as a refrigerated trailer and a reference which described a bulkhead for shipping compartments.  The inventors argued that the phrase “travel trailer” used in their claims referenced a type of recreational vehicle and was limiting.  The PTAB affirmed the Examiner’s rejection and found the preamble term “travel trailer” is a mere statement of intended  use and did not structurally limit the claims. 

The inventors challenged the Board’s decision that “travel trailer” did not limit the claims and for failing to state the level of ordinary skill in the art.  The Federal Circuit reversed the Board and stated that the preamble can be limiting when the claims depend on the preamble for antecedent basis. Further, the Federal Circuit determined that references, presented by the inventors, indicated “travel trailers” needed to be towable and have a living area.  Thus, “travel trailer” was a structural limitation of the claims, and the Court reversed the Board’s decision.

On the second issue, the Federal Circuit agreed with the Board’s finding that unless a patentee places the level of ordinary skill in the art at issue and argues that it would alter the outcome, the Board need not articulate the level of ordinary skill in its decision.

Editor: Paul Stewart