941 F.3d 1175
Fed. Cir.2019Background
- Appellants David Fought and Martin Clanton are inventors on U.S. Patent Application No. 13/507,528 (filed July 5, 2012) claiming a travel trailer with movable wall assembly separating living and garage compartments (two claims at issue).
- The examiner rejected claims 1–2 under pre‑AIA 35 U.S.C. § 102(b) as anticipated by Dietrich (truck/refrigerated trailer) and McDougal (shipping bulkhead); the Board affirmed the rejections.
- Appellants argued the preamble term “travel trailer” is a limiting structural term (a towable recreational vehicle with living quarters), proffering extrinsic evidence (Miller and Woodall’s RV Guide); the Board treated “travel trailer” as a non‑limiting statement of intended use.
- Appellants also argued the examiner/Board erred by not expressly stating the level of ordinary skill in the art; the Board did not address that point.
- The Federal Circuit reversed the Board on claim construction: “travel trailer” is a structural, limiting term (it provides antecedent basis and extrinsic evidence shows structural distinctions such as towability and living area) and remanded; the court rejected the argument that the Board was required to state the level of ordinary skill absent a specific dispute.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the preamble term “travel trailer” limits the claims | “Travel trailer” denotes a specific, towable recreational vehicle with living quarters; thus it is a structural limitation and provides antecedent basis for body terms | “Travel trailer” is a statement of intended use and not a structural limitation; extrinsic evidence does not add structural requirements | Reversed Board: “travel trailer” is a limiting preamble term because it provides antecedent basis and extrinsic sources show structural distinctions (towability, living space); remanded |
| Whether the Board erred by failing to state the level of ordinary skill in the art | Board/examiner should have articulated the level of ordinary skill | No requirement to state level absent a specific, particularized dispute about it | Affirmed that articulating level of ordinary skill is not required here; appellants failed to show how a different articulation would change the result |
Key Cases Cited
- In re Gartside, 203 F.3d 1305 (Fed. Cir. 2000) (standard of review for Board legal conclusions and factual findings)
- In re Man Machine Interface Techs. LLC, 822 F.3d 1282 (Fed. Cir. 2016) (review of claim construction and treatment of extrinsic evidence)
- In re American Academy of Science Tech. Ctr., 367 F.3d 1359 (Fed. Cir. 2004) (pending application claims receive broadest reasonable interpretation)
- Arctic Cat Inc. v. GEP Power Prod., Inc., 919 F.3d 1320 (Fed. Cir. 2019) (preamble language treated as claim construction issue)
- Bicon, Inc. v. Straumann Co., 441 F.3d 945 (Fed. Cir. 2006) (preamble that states purpose or intended use is generally non‑limiting)
- C.W. Zumbiel Co. v. Kappos, 702 F.3d 1371 (Fed. Cir. 2012) (preamble can be limiting when it provides antecedent basis)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (claims interpreted in light of the specification as understood by one of ordinary skill in the art)