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Justin E. Gray

IP Litigation Attorney at Foley & Lardner LLP

Former Adjunct Professor at Northwestern University School of Law

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Federal Circuit Finds Claim Preamble Not Limiting Under Broadest Reasonable Interpretation

In re Taylor (Fed. Cir. June 14, 2012) (nonprecedential)

In this case, the Federal Circuit agreed with the BPAI that the terms "low-calorie" and "palatable" found in the claim preamble of pending claims were not limiting.  The patent application at issue disclosed a cellulose-based dough that "can be used to form a variety of low-calorie foods."

Initially, the Examiner rejected numerous pending claims of the application as anticipated; the BPAI upheld the Examiner's rejection of claims.  The applicants attempted to traverse the rejection over the prior art by relying on the terms "low-calorie" and "palatable" in the claim preamble as limiting.  The BPAI disagreed, finding that the terms "merely reflect intended uses or purposes without imposing any structural limitation on the claimed compositions."

On appeal, the Federal Circuit explained that claims under examination by the PTO are given their broadest reasonable interpretation consistent with the specification, and this "does not prejudice the applicant, who has the ability to correct errors in claim language and to adjust the scope of claim protection as needed during prosecution by amending the claims."

In support of their position, the applicants relied on the Federal Circuit's opinion in Catalina Marketing, which stated in relevant part that "clear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art transforms the preamble into a claim limitation because such reliance indicates use of the preamble to define, in part, the claimed invention."  The applicants argued that during prosecution they expressly relied upon the claim preamble language to distinguish the prior art.

The Federal Circuit disagreed, distinguishing Catalina Marketing as arising "in the context of infringement litigation, where prosecution is closed."  In contrast, "[h]ere, where prosecution remains open and [the applicant] retains the option of amending the claim as needed, the Board correctly rejected [the applicants'] rigid reading of Catalina to conclude that the preambles ... are not limiting under the broadest reasonable interpretation of those claims."