No Patentable Weight; Not A Claim Limitation

  • Whether Claim Language Has Patentable Weight (Can Be Used To Distinguish Prior Art) Is Related To But Distinct From Whether That Language Qualifies As Limitation For Infringement Purposes: Whether claim language has patentable weight is related to but different than whether claim language constitutes a limitation for infringement purposes. E.g., “‘process terms in product-by-process claims serve as limitations in determining infringement.’” Abbott Labs. (Fed. Cir. 05/18/09) (en banc in part), but cannot distinguish prior art, unless impart novel structure: “For product-by-process claims, that which anticipates if earlier does not necessarily infringe if later.” Amgen (Fed. Cir. 09/15/09). Courts, however, rarely acknowledge this distinction and, partly as a result, the same answer normally applies to both issues. E.g., Textron (Fed. Cir. 09/07/12) (non-precedential) (citing at least some “no patentable weight” precedents in support of holding that functional language in an apparatus claim (at least when in the preamble) is a limitation only where “the language describes something about the structure of the apparatus rather than merely listing its intended or preferred uses.”)
  • Many Types Of Claim Language Have No Patentable Weight When Comparing Claim To Prior Art: Sometimes claim language, even when it recites something new and non-obvious, has “no patentable weight,” or “no patentable consequence” (AstraZeneca (Fed. Cir. 11/01/10)) albeit it may or may not be a limitation for infringement purposes. E.g.: a preamble, a whereby or thereby clause, “printed matter,” intended result, intended use, new intended use of an old capability, “a newly discovered fact about the association between [an old product’s] components or functions”; process portion of a product-by-process claim, source or process limitations in claim to an old product, input signals in a circuit claim, and non-functional descriptive material in a method or non-method claim. But see Mayo (U.S. 03/20/2012) (“But §§102 and 103 say nothing about treating laws of nature as if they were part of the prior art when applying those sections. Cf. Diehr, 450 U.S., at 188 (patent claims ‘must be considered as a whole’).”); In re Jasinski (Fed. Cir. 02/15/13) (non-precedential) (rev’g BPAI refusal to give language patentable weight where the language “refer[s] to the ‘essence of the invention’”). Consider seeking such a ruling as part of Markman (e.g., “this claim language limits the claim but has no patentable weight”).
  • Patentable Weight Can Be Determined During Claim Construction: “The Board properly addressed the printed matter doctrine during claim construction. The Board’s printed matter analysis here only required analyzing and interpreting the meaning of the claim language. That is claim construction, which is ultimately a legal inquiry.” Praxair (Fed. Cir. 05/16/18) (2-1) (providing information claim language has no patentable weight).
  • Secondary Considerations Irrelevant If Relate To Claim Language With No Patentable Weight: “Such printed matter cannot be brought within the ambit of patent eligibility by showing that it was surprising. No patentable weight means no patentable weight.” Praxair (Fed. Cir. 05/16/18) (2-1).
  • AIA: the Act uses this “no patentable weight” concept: “for purposes of evaluating an invention under section 102 or 103,” “any strategy for reducing, avoiding or deferring tax liability”: “shall be deemed insufficient to differentiate a claimed invention from the prior art.” (Sec. 14(a)).
  • BPAI Precedential And Informative Decisions Re No Patentable Weight: In re Schulhauser (PTAB 04/28/16) (precedential) (under broadest reasonable interpretation, steps triggered only if a condition precedent is met (“triggering an alarm state if the electrocardiac signal data is not within the threshold electrocardiac criteria; determining the current activity level of the subject from the activity level data if the electrocardiac signal data is within the threshold electrocardiac criteria”) need not be performed, such that an obviousness ground need not address those conditional steps; citing Cybersettle and Applera for parallel rule in infringement analyses); In re Nehls, No. 2007-1823, 2008 WL 258370, *10 (BPAI Jan. 28, 2008) (precedential) (expanded panel) (“There is no evidence that SEQ ID NOs 9-1008 functionally affect the process of comparing a target sequence to a database by changing the efficiency or accuracy or any other characteristic of the comparison. Rather, the SEQ ID NOs are merely information being manipulated by a computer; ….”); In re Curry, 84 USPQ2d 1272 (BPAI 2005) (“Informative Opinion”), aff’d (Fed. Cir. Appeal No. 2006-1003, June 12, 2006) (“Common situations involving nonfunctional descriptive material are: … – a computer that differs from the prior art solely with respect to nonfunctional descriptive material that cannot alter how the machine functions (i.e., the descriptive material does not reconfigure the computer), or – a process that differs from the prior art only with respect to nonfunctional descriptive material that cannot alter how the process steps are to be performed to achieve the utility of the invention.”)
  • Closely Related Doctrine: Admitted Inherency: A claimed property “is not an additional requirement imposed by the claims” where patent discloses that it is “a property necessarily present” where other claim limitations are present. Alcon Res. (Fed. Cir. 08/08/12) (quoting In re Kubin (Fed. Cir. 04/03/09)); cf. Par Pharm. (Fed. Cir. 12/03/14) (vacating obviousness judgment where no finding that claimed effects were “necessarily present” or the “natural result” of claimed steps.) ; but see Endo Pharma. (Fed. Cir. 05/16/18) (non-precedential) (distinguishing Par Pharm. because here claims require controlled release configuration which has been “specifically calibrated to produce the pharmacokinetic properties recited in the claims.”)
  • Markman Position May Waive “No Patentable Weight” Or “Inherency” Argument: Mytee Prod. (Fed. Cir. 09/02/11) (non-precedential) (“Mytee waived any inherency arguments when it proposed a functional definition for a structural limitation.”)
  • TIPS: Unified Theory Of No Patentable Weight:

a) preamble

  • Preamble Statement Of Intended Use Has No Patentable Weight: Preamble language, in article of manufacture claim, “for permitting a user to write thereon without the use of a marking implement,” not a limitation because mere statement of intended use and not clearly relied upon in prosecution history to distinguish over prior art. “[T]hat a structural term in the preamble is part of the claim does not mean that the preamble’s statement of purpose or other description is also part of the claim.” Marrin (Fed. Cir. 03/22/10) (claims anticipated); Outdry (Fed. Cir. 06/16/17) (aff’g PTAB obviousness decision; preamble (“A process for waterproofing leather”) “is simply a statement of intended use, not a separate claim limitation” and need not be disclosed in prior art reference).
  • Whether Has Patentable Weight May Depend On Whether Claim Before PTO On In District Court: In re Taylor (Fed. Cir. 06/14/12) (non-precedential) (aff’g PTO ruling that preamble not limiting, and distinguishing prior cases as arising in infringement litigation context.)
  • Preamble Use Of Label For Invention As A Whole Not A Limitation (Infringement): Reciting “a label for the invention as a whole” (“photoselective vaporization of tissue”) rather than an essential structure or step, is not limiting in infringement analysis. Am. Med. (Fed. Cir. 09/13/10). See supra, “How Construed?,” “claim preamble.”

b) printed matter, instructions on use, mental steps

  • “Printed Matter” Without Functional Or Structural Relationship To Physical Realm Has No Patentable Weight: A claim limitation is directed to printed matter “‘if it claims the content of information,’” and such limitations “are not entitled to patentable weight unless the printed matter is functionally related to the substrate on which the printed matter is applied” “because such information is not patent eligible subject matter under 35 U.S.C. § 101.” Praxair (Fed. Cir. 05/16/18) (2-1) (claimed providing of information to doctor along with nitric oxide gas cylinders, has no patentable weight). “A limitation is printed matter only if it claims the content of information… [It] must be matter claimed for what it communicates.” In re DiStefano (Fed. Cir. 12/17/15) (rev’g PTAB determination that claim element (“selecting a first element from a database including web assets authored by third party authors and web assets provided to the user interface or outside the user interface by the user”) lacks patentable weight: “Although the selected web assets can and likely do communicate some information, the content of the information is not claimed. And where the information came from, its ‘origin,’ is not part of the informational content at all.”); In re Theresa (Fed. Cir. 01/17/18) (non-precedential) (aff’g obviousness rejection; where claim recites symbols printed on labels affixed to memory devices, the symbols have “no patentable weight” because they “bear no functional or structural relationship to the labels on which they are printed and thus cannot form a patentable distinction with the prior art references … [The] labels relate to the contents of the memory devices labeled, not to the labels on which they are printed.”); In re Bryan (Fed. Cir. 03/31/09) (non-precedential) (aff’g obviousness rejection of claim to a “game board and game,” “the printed matter does not depend on the game’s structural elements, and the game’s structural elements do not depend on the printed matter.”); In re Xiao (Fed. Cir. 10/12/11) (non-precedential) (aff’g Board obviousness ruling based on ruling that wild-card position label on combination lock (which user could associate as part of a memorable word) has no patentable weight: “The claimed lock’s function turns solely on the physical alignment among tumbler rings, regardless of what may be printed at each position or how an individual user subjectively perceives any particular position label. In short, the presence or identity of a given position label has no bearing on the lock’s ultimate function, and the claimed device can be used in the same way and for the same purposes with or without wild-card position labels.” Information “useful and intelligible only to the human mind” has no patentable weight.) But see In re DiStefano (Fed. Cir. 12/17/15) (rev’g PTAB determination that claim element (“selecting a first element from a database including web assets authored by third party authors and web assets provided to the user interface or outside the user interface by the user”) constitutes “printed matter.”); In re Gulack (Fed. Cir. 03/30/83) (2-1) (sufficient functional relationship where claims “require a particular sequence of digits to be displayed on the outside surface of a band. These digits are related to the band in two ways: (1) the band supports the digits; and (2) there is an endless sequence of digits — each digit residing in a unique position with respect to every other digit in an endless loop. Thus, the digits exploit the endless nature of the band.” “The critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate.”)
  • Novel Instructional Limitation Has No Patentable Weight Where It Lacks Functional Relationship With Rest Of Claimed “Invention”: “Printed matter” case law applies to method claims as well as product claims. Where “an instructional limitation” (“‘informing’ the patient that taking metaxalone with food will increase the drug’s bioavailability”) is added to an old method, it cannot avoid invalidity unless it has a “new and unobvious functional relationship” with the known method. “This relationship, however, is not functional. Informing a patient about the benefits of a drug in no way transforms the process of taking the drug with food. Irrespective of whether the patient is informed about the benefits, the actual method, taking metaxalone with food, is the same. In other words, the ‘informing’ limitation ‘in no way depends on the [method], and the [method] does not depend on the [‘informing’ limitation].’”) King Pharm. (Fed. Cir. 08/02/10) (citing In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004) (per curium)); accord In re Kao (Fed. Cir. 05/13/11) (“no functional relationship” between the administering and informing steps). Cf. Warsaw I (Fed. Cir. 03/02/15) (rejecting convoyed sales lost profits because related products not “functionally related to the patented product, in part because they would work as well without the patented technology.”)
  • Drug Label Has No Patentable Weight: “as in Ngai the claimed instructions here are not entitled to patentable weight. The instructions in no way function with the drug to create a new, unobvious product. Removing the instructions from the claimed kit does not change the ability of the drug to treat respiratory diseases.” AstraZeneca (Fed. Cir. 11/01/10).
  • Mental Steps Have No Patentable Weight If Informational Content Has No Functional Relationship To Physical Realm: “Because claim limitations directed to mental steps may attempt to capture informational content, they may be considered printed matter lacking patentable weight in an obviousness analysis. Accordingly, a limitation that merely claims information by incorporating that information into a mental step will receive patentable weight only if the limitation is functionally related to the substrate.” Praxair (Fed. Cir. 05/16/18) (2-1) (giving no patentable weight to a “limitation [which] merely requires a medical provider to think about the information claimed in the providing information [claim] limitation;” but limitation “providing information and a recommendation to the medical provider to discontinue nitric oxide treatment for a patient with preexisting LVD who experiences a pulmonary edema” has patentable weight where claim also recites “based on” the recommendation, discontinuing nitric oxide treatment due to the pulmonary edema.)

c) non-functional descriptive material

  • Non-Functional Information Has No Patentable Weight: “Here, the descriptive material (SEQ ID NOs) recited in the claims is not functional material like the data structures in Lowry. There is no evidence that SEQ ID NOs 9-1008 functionally affect the process of comparing a target sequence to a database by changing the efficiency or accuracy or any other characteristic of the comparison. Rather, the SEQ ID NOs are merely information being manipulated by a computer; the SEQ ID NOs are inputs used by a computer program that calculates the degree of similarity between a target sequence and each of the sequences in a database. The specific SEQ ID NOs recited in the claims do not affect how the method of the prior art is performedthe method is carried out the same way regardless of which specific sequences are included in the database…. The recited sequences are not functionally related to the computer system carrying out the comparison because the computer compares a target sequence to a database the same way regardless of whether the database includes any of SEQ ID NOs 9-1008: the SEQ ID NOs and the computer do not depend on each other for their function. …. The claimed computer system requires the recited SEQ ID NOs, but not every claim limitation suffices to distinguish a claimed invention from the prior art. In this case, we conclude that the particular SEQ ID NOs recited in claim 13 do not patentably distinguish the claimed computer system from a prior art system that is otherwise identical.” In re Nehls, (BPAI Jan. 28, 2008) (precedential) (expanded panel) (footnotes omitted) (system claim).

d) intended use

  • Intended Use Has No Patentable Weight: “[T]he grant of a patent on a composition or machine cannot be predicated on a new use of that machine or composition…. As a matter of claim drafting, therefore, the discoverer of a new use must protect his discovery by means of process or method claims and not product claims.” In re Hack (CCPA 1957). See In re Dillon (Fed. Cir. 11/09/90) (en banc) (“composition claims on appeal are not structurally or physically distinguishable from the prior art compositions by virtue of the recitation of their newly-discovered use.”); In re Chudik (Fed. Cir. 08/25/17) (non-precedential) (aff’g anticipation rejection of app. claims; “The patentability of an apparatus claim ‘depends on the claimed structure, not on the use or purpose of that structure.’” Claim to “a humeral implant comprising a humeral surface component having a non-articular surface configured for long-lasting fixation of the implant on a humeral head and no stem,” anticipated by glenoid implant); In re Anderson (Fed. Cir. 10/13/16) (non-precedential) (aff’g Examiner obviousness finding; claim language that data is transmitted “for use by motorists in determining a route of travel” is not limiting because it is “a statement of intended use” and “does not add a structural limitation to the claimed system or method.”); But see Matthews (Fed. Cir. 03/27/18) (non-precedential) (rejecting argument that “casket body” has no patentable weight as mere intended use: “‘Casket body’ is a structural term in the body of the claim that further defines and limits the scope of the claimed invention. That structural terms are sometimes defined—through claim construction—by the functions they are designed to perform does not somehow convert those structural terms into ‘an intended use’ stripped of any patentable weight.”)
  • New Intended Use Of An Old Capability, Has No Patentable Weight: “Schreiber’s contention that his structure will be used to dispense popcorn does not have patentable weight if the structure is already known, regardless of whether it has ever been used in any way in connection with popcorn.” “The examiner and the Board both addressed the question whether the functional limitations of Schreiber’s claim gave it patentable weight and concluded that they did not, because those limitations were found to be inherent in the Harz prior art reference.” In re Schreiber (Fed. Cir. 10/23/97) (dispensing top for popcorn), distinguished in Mytee Prod. (Fed. Cir. 09/02/11) (non-precedential), in Bettcher (Fed. Cir. 10/03/11) (2-1) (claim required more capability than may have been inherent in prior art device.), and in In re Chudik (Fed. Cir. 01/09/17) (non-precedential) (rev’g anticipation rejection, no substantial evidence that reference taught the functional limitation).

e) wherein and whereby clauses

  • Wherein And Whereby Clauses Have No Patentable Weight Where Merely State Intended Result: Minton (Fed. Cir. 07/29/03) (aff’g Summ. J. of invalidity for “on sale” bar: “A whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.”); MPHJ (Fed. Cir. 02/13/17) (O’Malley, J., dissenting) (in analyzing anticipation of system claim, “the “wherein” limitation at issue is conditional; it explains that a specific protocol is used when one of said external destinations is email application software. Under the broadest reasonable interpretation of claim 1, the limitations in the “wherein” clause would not apply because email application software is not required to be the external destination in all embodiments.”); cf. Hoffer (Fed. Cir. 04/22/05) (“when the ‘whereby’ clause states a condition that is material to patentability, it cannot be ignored in order to change the substance of the invention”).

f) intended result

  • Intended Result Has No Patentable Weight: Roche (Fed. Cir. 07/09/08) (“in a stabilizing amount” is an intended result and not a claim limitation for infringement purposes; in a composition claim); but see Los Angeles Biomedical (Fed. Cir. 02/28/17) (emphasized language (“‘arresting or regressing the [penile] fibrosis, wherein the PDE-5 inhibitor is administered at a dosage up to 1.5 mg/kg/day for not less than 45 days’”) is not mere intended result without patentable weight because part of separate step of the method not a preamble (although that is “not dispositive”), and it demands efficacy not otherwise found in the claim language).

g) process portion of product-by-process claim

  • Process Limitation Has No Patentable Weight Unless Imparts Structural Difference: “For product-by-process claims, that which anticipates if earlier does not necessarily infringe if later.” Amgen (Fed. Cir. 09/15/09); In re Pond (Fed. Cir. 01/18/12) (non-precedential) (“a product-by-process claim does not add a patentable distinction when the claimed product is the same as the cited art’s product.”). But, “there is an exception to this general rule that the process by which the product is made is irrelevant. As we recognized in Amgen, if the process by which a product is made imparts ‘structural and functional differences’ distinguishing the claimed product from the prior art, then those differences ‘are relevant as evidence of no anticipation’ although they ‘are not explicitly part of the claim.’” Greenliant (Fed. Cir. 08/22/12); Purdue Pharma (Fed. Cir. 02/01/16) (limitation that element be “derived from” a particular source was a process limitation, not a structural or functional limitation, because “source of the 14-hydroxy has no effect on its structure or its removal through hydrogenation,” and therefore could not distinguish prior art in obviousness determination); In re Thorpe (Fed. Cir. 11/21/85) (“The patentability of a product does not depend on its method of production.”). “For validity purposes, the ‘invention’ in a product-by-process claim is the product.” The Medicines Co. II (Fed. Cir. 07/11/16) (en banc).
  • Where Can Be Interpreted As Structural Limitation Or Process Limitation, Default Is Structural Interpretation: In re Nordt (Fed. Cir. 02/08/18) (vacating PTAB construction of “injection molded” as process limitation with no patentable weight: “words of limitation that can connote with equal force a structural characteristic of the product or a process of manufacture are commonly and by default interpreted in their structural sense, unless the patentee has demonstrated otherwise;” citing multiple examples in precedents); In re Garnero (CCPA 06/26/69) (interpreting as structural that particles are “‘interbonded one to another by interfusion between the surfaces of the perlite particles’” because as capable of being construed as a structural limitation as “intermixed,” “ground in place,” “press fitted,” “etched,” and “welded,” all of which at one time or another have been separately held capable of construction as structural, rather than process, limitations.”)

h) source or process restrictions in product claim

  • Process Or Source Restriction Has No Patentable Weight Unless Imparts Structural Difference: “when considering obviousness and anticipation issues relating to the ’080 and ’422 patents the district court should be cognizant of the rule that a claimed product shown to be present in the prior art cannot be rendered patentable solely by the addition of source or process limitations. Gen. Elec. (1938); Cochrane (1884).” Amgen (Fed. Cir. 01/06/03). Cf. Amgen (Fed. Cir. 09/15/09) (source limitation imparted novel structure).

i) optional, conditional steps

  • Optional And Conditional Steps Have No Patentable Weight: In re Johnston (Fed. Cir. 01/30/06) (aff’g anticipation: “optional elements [“may be”] do not narrow the claim because they can always be omitted.”); In re Schulhauser (PTAB 04/28/16) (precedential) (under broadest reasonable interpretation, steps triggered only if a condition precedent is met need not be performed, such that an obviousness ground need not address those conditional steps; citing Cybersettle and Applera for parallel rule in infringement analyses); cf. MPHJ (Fed. Cir. 02/13/17) (O’Malley, J., dissenting) (in analyzing anticipation of system claim, “the “wherein” limitation at issue is conditional; it explains that a specific protocol is used when one of said external destinations is email application software. Under the broadest reasonable interpretation of claim 1, the limitations in the “wherein” clause would not apply because email application software is not required to be the external destination in all embodiments.”)

j) input signals in a circuit

  • Input Signals In A Circuit Claim Have No Patentable Weight: “In fact, Translogic admits, as is proper for a structural circuit, that the input variables (i.e., signals) are not part of the claimed invention.” In re Translogic Tech. (Fed. Cir. 10/12/07).

k) theory of operation

  • Newly Discovered Association Between An Old Product And Its Function, Has No Patentable Weight: “nothing material to anticipation is added,” in a product claim, by claim language “weight concentration ratio correlating to the quality of fabric safety of the product solution selected with the range of damaging to abated damage to cotton-safe” because “a newly discovered fact about the association between [an old product’s] components or functions” “does not alter what the product is or even does.” In re Taylor (Fed. Cir. 11/06/15).