McDonnell Boehnen Hulbert & Berghoff LLP

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Mar 20, 2006

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One solution would be to eliminate the preamble when claiming. I've seen this done at several firms, and in-house. However, would this render the claim indefinite? For example, a claim could read "A method comprising administering compound X to an individual in need thereof." Assume the compound and administration are novel, have utility described in the spec., and are non-obvious. This eliminates "essential structure" in the claim. But my belief is that this could be considered indefinite for lacking a preamble -- is the claim above a method for treating cancer by administering compound X or is it a method for treating baldness or for curing the hiccups?

Perhaps a preamble is required, but one should just be careful to avoid drafting limiting structure?

This is a useful case for any foreign patent attorneys filing or preparing patent specifications for filing international patent applications. Too often, we consider the specification in terms of our own receiving offices.

I think there are simple enough ways to use a preamble without reciting "essential structure" in the preamble. In the example posted by Jeckyl, the preamble could recite "A method for treatment." Paring down the preamble to just "A method" seems like a good strategy. My only question is whether an examiner could question the utility of a claim that just recites "A method."

My own approach is to refer back to preamble elements in the body of the claim if I intend them to be limiting, i.e. if there's a widget in the preamble and 'said widget' in the body then the widget can't be read out of the claim.

This decision appears to be consistent with the existing precedent--which is codified in MPEP 2111.01:
“If the claim preamble, when read in
the context of the entire claim, recites limitations of the claim, or, if the claim preamble is
necessary to give life, meaning, and vitality’ to the claim, then the claim preamble should
be construed as if in the balance of the claim.” Pitney Bowes, Inc. v. Hewlett-Packard
Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165-66 (Fed. Cir. 1999)

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