Federal Circuit reverses PTAB’s holding that the preamble “travel trailer” was nothing more than an intended use, and not limiting

David Fought and Martin Clanton (“Appellants”, In re Fought and Clanton) are the named inventors on US Patent Application No. 13/507528 directed to a “travel trailer.”  The Examiner rejected the claim 1 under 35 USC 102(b) over a reference describing a conventional truck trailer and claim 2 under 35 USC 102(b) over a reference describing a bulkhead for shipping compartments.  Appellants provided extrinsic evidence that showed that those of ordinary skill in the art considered a travel trailer a type of recreational vehicle.  PTAB affirmed the Examiner’s rejections, concluding that the phrase “travel trailer” was a mere statement of intended use and not limiting to the claims.  The Federal Circuit reversed and remanded, stating “We have repeatedly held a preamble limiting when it serves as antecedent basis for a term appearing in the body of a claim.”

With respect to the extrinsic evidence cited by Appellants, the PTAB held that the teachings of the references that the differentiating features of a “travel trailer” – the towability and inclusion of a living area were merely intended uses.  The Federal Circuit disagreed and held:

Towability is a structural difference, not an intended use.  A living area is likewise a structural requirement…Based on the extrinsic evidence, we conclude that a “travel trailer” is a specific type of recreational vehicle and that this term is a structural limitation of the claims…Just as one would not confuse a house with a warehouse, no one would confuse a travel trailer with a truck trailer.

This case reminds me of William Wesley (see, https://www.ksjlaw.net/similarity-of-purpose-not-enough-to-establish-motivation-to-combine/).  Though my post regarding that case focused on the obviousness rejection and analysis, the PTAB had held the preamble limiting and thus effective to differentiate the applied prior art in that case.