This case was an appeal from two final written decisions of the Patent Trial and Appeal Board (PTAB) following inter partes reviews (IPR) of two related patents. The PTAB found all challenged claims unpatentable. One of the issues on appeal was whether the preamble language, which generally recited a “personal recreational vehicle,” was limiting. The PTAB concluded that they were not, and the Federal Circuit agreed.
For one set of claims, the Federal Circuit held that the preambles were not limiting because the bodies of the claims “describe structurally complete inventions” and the preambles referred only to a mere “intended use” of the structure.
For the other set of claims, the Federal Circuit noted that the “personal recreation vehicle” was an “additional structure” to the structure recited in the body of the claims. But the Federal Circuit explained that not every preamble reference to additional structure is limiting. The court further explained that the vehicle in the preamble was entirely conventional apart from the improvement in the body of the claims. Looking to a Patent Office regulation regarding preambles, 37 C.F.R. § 1.75(e), the court observed that “conventional or known” elements should be in a “preamble,” followed by a transition phrase “such as ‘wherein the improvement comprises,’” and concluding with an identification of elements that “the applicant considers as the new or improved portion.” The regulation thus endorses the well-known Jepsonclaim format. Thus, in cases where the preamble recites only “wholly conventional” subject matter, the court explained that when an applicant chooses not to use the Jepson format, this provides a “powerful reason to deny the preamble the limiting effect” that the preamble in a Jepson claim would have.