Ex parte Bell
Appeal 2014-009335; Appl. No. 13/050,752; Tech. Center 3700
Decided: September 28, 2016
The application on appeal was directed to a hydraulic pressure regulator. A representative claim on appeal read:
1. A system comprising:The Examiner rejected claim 1 as indefinite. The Examiner explained that the only structural limitations of the claim were parts of the regulator. This indicated that the claim was drawn to a regulator, even though the preamble read "a system comprising." It was therefore unclear whether the functional language "having a maximum deadband ..." was part of the preamble (and thus non-limiting) or part of the body (and thus limiting).
a spring-loaded hydraulic pressure regulator having a maximum deadband of less than 200 pounds per square inch when coupled to a source of pressurized fluid having a supply pressure of at least 1000 pounds per square inch,
the spring-loaded hydraulic pressure regulator comprising:
a housing having first and second inner chambers;
a spring disposed within the second chamber;
a sensing piston disposed within the housing and responsive to pressure within the first inner chamber and to a biasing force generated by the spring; and
at least one supply seal ring disposed within the first chamber.
On appeal, the Applicant argued that the deadband functional language was clearly part of the body, since it followed the preamble. The Applicant further noted the dependent claims included further elements in the system of the independent claim. Finally, the claim was definite because "it sets out and circumscribes a particular subject matter (i.e., a specific type of spring-loaded hydraulic pressure regulator) with a reasonable degree of clarity."
The Examiner responded in the Answer as follows:
[T]he claim includes two transitional phrases, and the argued limitation also precedes the second transitional phrase, under which logic the argued limitation should be considered part of the preamble, because it precedes a transitional phrase.The Examiner summarized up his stance on indefiniteness as: "reasonable artisans could disagree as to the limiting effect of the argued limitation."
The Board reversed the indefiniteness rejection as not being supported by a "rational underpinning." Referring to a dictionary definition of "system," the Board explained that the word "simply connotes the following parts are intended to move and/or work together." Since the claim clearly described a regulator as a combination of parts intended to work together, "there is nothing ambiguous with describing, in the preamble, the claimed regulator as a 'system.' "
My two cents: I suppose the Applicant could have avoided/overcome the rejection by using "regulator" in the preamble. But maybe using "system" instead avoided arguments in litigation about the meaning of "regulator" ?
Some of the Applicant's comments suggested that the use of "system" rather than "regulator" in the preamble was related to the dependent claims. "System" allowed dependent claims with additional elements (e.g., blowout preventer, fluid source) that were external to the regulator.
Would the Examiner have given the same indefiniteness rejection if the preamble recited device or apparatus?