Board Reverses Examiner for Dismissing Structural Limitation Imparted by Preamble

April 20, 2012 – Blog Post

Ex parte Quijano et al (Appeal 2010-005756, Serial no. 11/263,302) turned on whether the preamble imparted a structural limitation to the claim. The independent claim at issue reads as follows:

“Claim 24: A gastric space filler device comprising an inflatable space filler with a first reference shape that substantially maintains said first reference shape at a deflated state.”

The Examiner argued that the preamble recitation of “[a] gastric space filler device” is not limiting because “the body of claim 24 following the preamble is a self-contained description of the structure and does not depend on the preamble for completeness…” Appellants argued that when reading the preamble in light of the Specification, which indicates that the “space fillers are for use in gastric applications only,” a skilled artisan would understand that the preamble was intentionally used to limit the claimed invention to intragastric space fillers. In turn, Appellants contended that the preamble recitation of the claimed invention is limiting and distinguishes the claimed invention from the woven yarn of the cited art which is designed to be used in conjunction with an angioplasty or dilation balloons for cardiovascular use.

The Board reversed the Examiner agreeing with Appellants that the recited preamble is “‘necessary to give life, meaning, and vitality’ to the claim.” (Id.)(citing Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). The Board held that a skilled artisan would have understood that the preamble imparts structural limitations, i.e., “it indicates that the inflatable device must be of the correct dimensions and made from materials compatible for long term use as a gastric device.” Thus, The Board concluded that the Examiner failed to establish that that the cardiovascular balloon catheter relied upon in the cited art anticipated the claimed gastric space filler device.