It is well-established, “No litmus test defines when a preamble limits claim scope.” Catalina Mktg. Int’l v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). In other words, there is no clear rule explaining when an Examiner will or will not give patentable weight to a preamble.
Nevertheless, some Applicants rely on Catalina Mktg. to argue “clear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art transforms the preamble into a claim limitation . . . .” Id. That is, these Applicants essentially argue the only reason the Examiner has not given weight to the preamble is that the Applicant has not argued yet that the preamble should be given weight. In their view, an Examiner should concede, once an Applicant requests the preamble be given patentable weight.
That position is untenable. The Patent Trial and Appeals Board routinely upholds Examiners who did not give patentable weight to a preamble, even after an Applicant clearly relies on the preamble to distinguish over the applied references. E.g., Ex parte Sutton, Appeal No. 2021-003959, slip op. at 5-7 (PTAB Jan 28, 2022) (US Serial No. 15/775,240).
On the other side, confronted with a “clear reliance” argument, an Examiner might reply with the Catalina reasoning that “a preamble generally is not limiting when the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention . . . .” Catalina Mktg. at 809. From such a viewpoint, an Examiner can decline to give weight to the preamble, simply by finding the claim body is “structurally complete,” subject to an appropriate deletion.
Like the Applicants, the Examiner’s reliance on Catalina Mktg. goes too far. With such reliance, the Examiner could simply deem any claim to include a “structurally complete” invention, unless such an interpretation would be inconsistent with the rest of the Office Action. Such an inconsistency might arise, for example, if the Office Action includes an uncommon rejection under 35 USC 112(b) (MPEP 2175, ¶ 7.34.12-14). Thus, in most cases, an Examiner would never give patentable weight to a preamble.
On this point, the better view seems to be that a “structurally complete” invention is one that does not find antecedent basis in the preamble, nor does the preamble provide essential structure or necessary meaning. E.g., Shoes by Firebug LLC v. Stride Rite Children’s Group, LLC, No. 2019-1622, slip op. at 8-10 (Fed. Cir. June 25, 2020).
Thus, despite its discussion, Catalina Mktg. does not prescribe a “clear reliance” test for Applicants, nor does it prescribe a “structurally complete” test for Examiners. These two tests, instead, are the types of litmus tests expressly denied by Catalina Mktg.
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