2114

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


I. 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.”).

See Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) and In re Danly, 263 F.2d 844, 847 (CCPA 1959) (appellant has used such phrases as “for holding” and “for insulating” throughout the appealed claims with the obvious intention of limiting them to actual performance of the stated functions, as distinguished from mere possibility of such performance).

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.
 
A claim reciting an apparatus may be anticipated by a reference disclosing a device that includes each and every structural limitation in the claim and that is capable of performing each and every functional limitation in the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1478-79 (Fed. Cir. 1997) (upholding the Board’s affirmance of a rejection under section 102(b) on the basis of a finding that a device disclosed in a prior art reference was capable of performing a function which the appellant alleged to distinguish the appellant’s apparatus from the device).

“A patent applicant is free to recite features of an apparatus either structurally or functionally . . . Yet, choosing to define an element functionally, i.e., by what it does, carries with it a risk.” In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (internal citation omitted). ...


See Schreiber at 1477-78 (once the Examiner finds that the prior art structure would be capable of performing all of the functions claimed, the burden shifts to the applicant to show this this is not the case.).


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).

 Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990); see also Roberts v. Ryer, 91 U.S. 150, 157 (1875) (“The inventor of a machine is entitled to the benefit of all the uses to which it can be put, no matter whether he had conceived the idea of the use or not.”). 

[A] system claim generally covers what the system is, not what the system does. Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990); see also Roberts v. Ryer, 91 U.S. 150, 157 [] (1875) (“The inventor of a machine is entitled to the benefit of all the uses to which it can be put, no matter whether he had conceived the idea of the use or not.”). Thus, it is usually improper to construe non-functional claim terms in system claims in a way that makes infringement or validity turn on their function. Paragon Solutions, LLC v.Timex Corp., 566 F.3d 1075, 1091 (Fed. Cir. 2009).

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).
 
II. 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).

III. 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.).

When a claim requires two separate elements, using one element construed as performing two separate functions will not suffice to meet the terms of the claim. See In re Robertson, 169 F.3d 743 (Fed. Cir.

1999).


In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (“The Board’s theory that these two fastening devices in Wilson were capable of being intermingled to perform the same function as the third and first fastening elements in claim 76 is insufficient to show that the latter device was inherent in Wilson. Indeed, the Board's analysis rests upon the very kind of probability or possibility—the odd use of fasteners with other than their mates—that this court has pointed out is insufficient to establish inherency.”).



IV.   DETERMINING WHETHER A COMPUTER-IMPLEMENTED FUNCTIONAL CLAIM LIMITATION IS PATENTABLE OVER THE PRIOR ART UNDER 35 U.S.C. 102 AND 103


See also In re Paulsen30 F.3d 1475, 1480 (Fed. Cir. 1994) (Although an inventor is free to define the specific terms used to describe the invention, this must be done with reasonable clarity, deliberateness, and precision; where an inventor chooses to give terms uncommon meanings, the inventor must set out any uncommon definition in some manner within the patent disclosure so as to give one of ordinary skill in the art notice of the change.).

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