Most Common Preambles

18 thoughts on “Most Common Preambles”

1. 18

   David, great comment.

   Act vs. function. It’s amazing how when you get right down to these very, very basic terms, the courts are just all over the place, and nowhere at the same time. No wonder that, after spouses, claim drafting is the leading cause of ulcers in patent lawyers.

   For one thing, it would help matters a whole lot if the term “element” would be reserved for structural (physically tangible) components and “function” would apply only to such elements. Elements have functions; steps have results. It is meaningless to say that the act of stepping on the brake has a function. It is the brake that has the function; the stepping has a result.

   A “normal” method step claims some act without (necessarily) explicitly specifying the result; i.e. what is claimed is someone or something taking some action.

   Functions, on the other hand, refer to a result without specifying any action.

   If a claim includes a step of peeling a potato, that is an clearly act — an action. (The result of obtaining a peeled potato is an inherent result, but is not explicitly claimed.)

   If the spec discloses 30 different ways to peel a potato, you can wrap them all up into a single “step for peeling a potato”, which is claiming the result, but statutorily and implicitly is a claim to whatever actions are disclosed in the spec.

   The semantics are unnecessarily confusing — not untypical for judicially-created jargon. With respect to machine/manufacture claims, the term “means-plus-function claim” is fine — meaning structure having the claimed function is disclosed in the spec but that structure isn’t spelled out in the claim.

   But with respect to methods claims, it should be “step-plus-results claim” — meaning actions that produce the claimed result are disclosed in the spec, but those actions are not spelled out in the claim.

   I have moaned before about how the US case law butchers semantics, particularly with the very basic terms “element,” “limitation,” “step,”. The Tekmar decision you quote makes my ulcers sit up and bark:

   “We interpret the term ‘steps’ to refer to the generic description of elements of a process,”.

   In my view, a process does not have elements. A process claim may cite structure, but that structure is not an element, it is a limitation of the act.
2. 17

   Thanks Mr Boundy for that eloquent tutorial on 112-6, one of those provisions of patent law that is found in US patent law in the USA and nowhere else in the world, which was intended to bring clarity but which (it seems to me) has had the reverse of the intended effect. i had a feeling that a thread on “preambles” would end up on 112-6.
3. 16

   Paul Morgan’s question re “Comprising the steps of:” vs “the steps” vs “steps for” or other variants:

   In Masco Corp. v. U.S., 303 F.3d 1316, 1326–27, 64 USPQ2d 1182, 1188–89 (Fed. Cir. 2002), the Federal Circuit comes very close to stating a bright-line test for whether method claims are or are not step-plus-function claims within § 112 ¶ 6: if a claim does not use the preamble “comprising steps for,” Masco appears to create a presumption that § 112 ¶ 6 does not apply, and there would have to be “a showing that the limitation contains nothing that can be construed as an act.” One the other hand, the court comes close to stating that anything in the body of a claim whose preamble reads “comprising the steps of” claim will be construed as “acts” (outside of § 112 ¶ 6), not as “functions” (within § 112 ¶ 6) (paardon the lack of paragraph, italic, etc. formatting):

   … [I]n the context of method claims, the use of the term “steps for” signals the drafter’s intent to invoke § 112, paragraph 6. However, even where the drafter employs the “step for” language, “section 112, ¶ 6 is implicated . . . only when steps plus function without acts are present.” …

   … Neither of these claims employs the “step for” language that signals the drafter’s intent to invoke § 112, paragraph 6; rather, the claims employ the term “steps of.” Thus, there is no presumption that these limitations are in step-plus-function format.

   Where the claim drafter has not signaled his intent to invoke § 112, paragraph 6 by using the “step[s] for” language, we are unwilling to resort to that provision to constrain the scope of coverage of a claim limitation without a showing that the limitation contains nothing that can be construed as an act. Method claims are commonly drafted, as in this case, by reciting the phrase “steps of” followed by a list of actions comprising the method claimed. An application of § 112, paragraph 6 in the present circumstances would render the scope of coverage of these method claims uncertain and disrupt patentees’ settled expectations regarding the scope of their claims. We thus hold that where a method claim does not contain the term “step[s] for,” a limitation of that claim cannot be construed as a step-plus-function limitation without a showing that the limitation contains no act.

   [end quote]

   See also Epcon Gas Systems, Inc. v. Bauer Compressors, Inc., 279 F.3d 1022, 1028, 61 USPQ2d 1470, 1475 (Fed. Cir. 2002); Seal-Flex, Inc. v. Athletic Track and Court Construction, 172 F.3d 836, 849–50, 50 USPQ2d 1225, 1233–34 (Fed. Cir. 1999) (Seal-Flex II) (Rader, J., concurring); O.I. Corp. v. Tekmar, 115 F.3d 1576, 1583, 42 USPQ2d 1777, 1782 (Fed. Cir. 1997) (method claim that paralleled means-plus-function apparatus claim but lacked “step for” language did not invoke § 112 ¶ 6); Serrano v. Telular Corp., 111 F.3d 1578, 1583, 42 USPQ2d 1538, 1542 (Fed. Cir. 1997) (Fed. Cir. 1997) (same)

   The court has yet to give us any meaningful guidance on how to tell the difference between “function” and “acts.” Masco, 303 F.3d at 1327, 64 USPQ2d at 1188 (“Method claims are commonly drafted … by reciting the phrase ‘steps of’ followed by a list of actions…”); Epcon Gas Systems, Inc. v. Bauer Compressors, Inc., 279 F.3d 1022, 1028, 61 USPQ2d 1470, 1475 (Fed. Cir. 2002) (deciding that a disputed claim was not in step-plus-function form, but merely observing that “The claim recites a series of steps without the recital of function,” without setting out any test for deciding which is which); O.I. Corp. v. Tekmar, 115 F.3d 1576, 1582–83, 42 USPQ2d 1777, 1781–82 (Fed. Cir. 1997) (“We interpret the term ‘steps’ to refer to the generic description of elements of a process, and the term ‘acts’ to refer to the implementation of such steps,” again without giving any guidance to distinguish); Serrano v. Telular Corp., 111 F.3d 1578, 1583, 42 USPQ2d 1538, 1542 (Fed. Cir. 1997) (Fed. Cir. 1997) (the claim “is not drafted in ‘step plus function’ form. That is because it does not recite a function. … Rather, it recites only the act of determining a last-dialed digit.”).
4. 15

   Dennis question: When would you use a generic “a method” preamble verses a more detailed preamble such as a “method for content selection of digital media stored in a memory coupled to a digital media processor and playable on a digital audio-visual playback device”?

   Boundy answer: almost always. Preambles almost never help, and (whenever they make an appearance) almost always hurt. I sometimes amend a preamble to track a classification from the Manual of Classification for restriction purposes, but that’s about it.
5. 14

   GWW, I was wondering when the first non-US contribution would arrive, in this very esoteric, special to the US subject. You contrast Shakespeare (A rose by any other name…) with the Hickman “workbench” case in England.

   Although the Workmate litigation was long before Lord Hoffmann arrived with his claim construction test:

   “What does the PHOSITA think the writer of the claim was using the language of the claim to mean”

   it is interesting to run the Workmate claim through the Hoffmann test. The PHOSITA would conclude without difficulty that book-sized book-binding clamps are not within the ambit of what the claim writer was trying to capture, right? So, no infringement (if after); no destruction of novelty (if it came before). No fuss, no bother, right.

   Some things really are quite simple. Thank goodness. To American readers: all this jurisprudence about the preamble. It is more complicated than it needs to be, isn’t it?
6. 13

   Note principle from a UK case – Hickman v Andrews – claim to “A workbench, the workbench comprising…(listing of integers)” does not extend to a prior art device having all the integers listed in the claim but not a “workbench” and in no way capable of being used as a workbench eg cause prior art device with the same integers is just too small to in anyway be capable of use as a workbench. Applications drafted in eg the UK (though this case may now be out of date there), Australia, New Zealand etc & filed in the US may have a specific claim preamble or naming of the claim against this background. Don’t know if this would limit claim scope in the same way in the US however?
7. 12

   “Bit surprised to not see “Computer-Readable Medium” or any of its variants on there. Probably because these claims usually aren’t listed first?”

   I would imagine it’s because CRM claims usually take the form of “a computer-readable medium having computer executable code blah blah blah comprising:” with 1001 variations, and a claim that reads simply “a computer-readable medium comprising:” is relatively rare (often not statutory) and so does not make the list.
8. 11

   For experienced prosecutors: What is the perceived benefit of claiming a “system” in lieu of a “device” or “apparatus”?
9. 10

   Has the hearing schedule been published for the Bilski appeal? Any clues when a final ruling would be issued?
10. 9

    Mr. Morgan and SCOTUS, are you guys on the same page?

    PM opined that “the steps comprising” triggers a 112/6 issue. Then SCOTUS shot back about “comprising the steps of.” These are not equivalent.

    “The steps comprising” means that the steps have sub-steps or limitations — it is the step that comprises something, as opposed to the method.

    The proper preamble would be what SCOTUS is talking — “A method comprising the steps of . . .” is fine, so long as there is no noun between “method” and “comprising;” i.e., there must be no possible confusion as to the subject of “comprising”.

    If you have an intervening noun between “method” and “comprising” then you need a “wherein said method” sort of transition.

    Claim 1
    A method for annoying a circuit court of appeals judge, wherein said method comprises the steps of:
    (1) drafting a claim with a vague preamble; and
    (2) appealing to the circuit court a rejection of the claim of Step (1).

    I guess “steps comprising” might be used when one further restricts steps already claimed. “The method of Claim 1, Step (1) comprising using at least one participle with an indefinite subject.”

    Although I would phrase it, “The method of Claim 1, wherein Step (1) comprises using at least one participle with an indefinite subject.” Participles start tripping over themselves if you use too many of them.

    As to the allegation that “steps comprising” automatically invokes 112/6 . . . absurd. “Steps comprising . . .” is the antithesis of step-plus-function because “steps comprising . . .” claims the acts to be taken, and so 112/6 is avoided.

    Mr. Morgan is just trying to pull our collective e-leg here.
11. 8

    The CAFC case law note by “confused SCOTUS” above is correct. But, why risk some district court judge possibly getting confused in a Markman hearing by ever using the “trigger words” – “steps” or “means” – ANYWHERE in a claim, unless one really does want to trigger 112 paragraph 6?

    “A longer preamble may be useful to set up the purpose or context of the invention, for example an object to be worked on by the invention, which is then set out in the body of the claim.” is also a more complete expression of what I was suggesting in defense of having a preamble in some claims. Thanks.
12. 7

    Bit surprised to not see “Computer-Readable Medium” or any of its variants on there. Probably because these claims usually aren’t listed first?
13. 6

    Paul Morgan says: “But even short preambles can have undesireable terms. For example, did many applicants add after your above “A method..” the words “the steps comprising”? [That may unintentionally trigger 112(6)].”

    I disagree. According to the language of 112P6 itself, 112P6 applies to “an element in a claim”, not to all elements. And nowhere does 112P6 mention the preamble or transitional phrases. The Fed Cir has been quite clear on its analysis of transitional phrases, and there is no case law that I am aware of that supports an interpretation that reciting “comprising the steps of” in the preamble means every step/element recited in the body of the claim has 112P6 applied to it. And I think the Fed Cir would hesitate to upset established precedent and somehow find that a transitional phrase triggers application of 112P6 to every step/element of a claim.

    The shorter the preamble the better. A longer preamble may be useful to set up the purpose or context of the invention, for example an object to be worked on by the invention, which is then set out in the body of the claim. Other than set-up language though, the longer the preamble, the more likely it will find its way into the body of the claim, whether by the claim language itself, the spec, or even by statements made during prosecution.
14. 5

    In other words, Dennis, most claims have longer more involved preambles.
15. 4

    Re your question of when one might want to use a slightly longer claim preamble.
    One answer would be when one wants a claim more likely to more immediately appeal to an examiner, judge or jury, providing one can do so without adding unecessary additional claim limitations.
    But even short preambles can have undesireable terms. For example, did many applicants add after your above “A method..” the words “the steps comprising”? [That may unintentionally trigger 112(6)].
16. 3

    Michael –

    1.6% A method
    0.6% An apparatus
    0.5% A semiconductor device
    0.4% A system
    0.4% A composition
    0.2% An image forming apparatus
    0.2% A device
    0.1% A display device
    0.1% A semiconductor memory device
    0.1% A liquid crystal display device
    0.1% A pharmaceutical composition
17. 2

    Can you give some statistic with the ranking? For example, what percentage of first claims had the preamble “A method”?
18. 1

    As an “Actual Inventor” I would recommend using the world “process” in place of Method even though they mean the same thing. The word “process” is actually used in the statute and just gives you a solid framework for arguing the merits of your invention based on the law and constitutional rights.

    And while the subject is open I would like to address the elephant in the blog no one seems to dare touch.

    Isn’t this entire Bilski/business method uprising all about the fact that process is a separate and distinct category for patentable subject matter made into law by congress?

    The simple fact is some want to take away that right of inventors and others want to maintain it. But those that want to do away with process rights for inventors don’t seem to have any support from the public to get congress to change the law so they are doing a back end run through the federal courts to try and get their way.

    Just once I would like to see an intellectually honest discussion on that subject on this or any blog.

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