2114

2114 Apparatus and Article Claims - Functional Language [R-1]


APPARATUS CLAIMS MUST BE STRUCTURALLY DISTINGUISHABLE FROM THE PRIOR ART

DANLY

Claims directed to an apparatus or device must be distinguished from the prior art in terms of structure. See In re Danly, 263 F.2d 844, 848 (CCPA 1959) (“Claims drawn to an apparatus must distinguish from the prior art in terms of structure rather than function”); In re Gardiner, 171 F.2d 313, 315-16 (CCPA 1948) (“It is trite to state that the patentability of apparatus claims must be shown in the structure claimed and not merely upon a use, function, or result thereof.”).

SCHREIBER

“It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).

See In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997) (functional language does not confer patentability if prior art structure has capability of functioning in the same manner).

Claims directed to an apparatus must be distinguished from the prior art on structural grounds. See In re Schreiber, 128 F.3d 1473, 1477-1478 (Fed. Cir. 1997).

It is well established that claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function, see, e.g., In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997). In order to satisfy the functional limitations in an apparatus claim, however, the prior art apparatus must be capable of performing the claimed function. Id. at 1478.

HEWLETT-PACKARD

Finally, “apparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469 (Fed. Cir. 1990).

SWINEHART

Functional language in a patent claim is “an attempt . . . to define something . . . by what it does rather than by what it is.” In re Swinehart, 439 F.2d 210, 212, (CCPA 1971). “[T]here is nothing intrinsically wrong with the use of such a technique in drafting patent claims.” Id.

"‘Functional’ terminology may render a claim quite broad. By its own literal terms a claim employing such language covers any and all embodiments which perform the recited function." In re Swinehart, 439 F.2d 210, 213 (CCPA 1971).
In re Swinehart, 439 F.2d 210 (CCPA 1971), sets forth the burden of proof required to overcome an inherency rejection:

[I]t is elementary that the mere recitation of a newly discovered function or property, inherently possessed by things in the prior art, does not cause a claim drawn to those things to distinguish over the prior art. Additionally, where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. [439 F.2d at 212-13, 58 CCPA at 1031, 169 USPQ at 229.] This burden was involved in In re Ludtke, 441 F.2d 660, 58 CCPA 1159, 169 USPQ 563 (1971), and is applicable to product and process claims reasonably considered as possessing the allegedly inherent characteristics.In re Best, 562 F.2d 1252, 1254-55 (CCPA 1977).
 
MANNER OF OPERATING THE DEVICE DOES NOT DIFFERENTIATE APPARATUS CLAIM FROM THE PRIOR ART

MASHAM

A “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).

A PRIOR ART DEVICE CAN PERFORM ALL THE FUNCTIONS OF THE APPARATUS CLAIM AND STILL NOT ANTICIPATE THE CLAIM

ROBERTSON

see also In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (claims requiring three separate means not anticipated by structure containing only two means using one element twice).

See e.g., In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (The claims were drawn to a disposable diaper having three fastening elements. The reference disclosed two fastening elements that could perform the same function as the three fastening elements in the claims. The court construed the claims to require three separate elements and held that the reference did not disclose a separate third fastening element, either expressly or inherently.).
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