Since the early 1990s, patent practice has gradually migrated away from the use of means-plus-function language[1] in patent claims due to case law that restricted the scope of means-plus-function claim limitations[2]. Applicants now often use so-called “functional” language, to describe an element of a claimed invention as being “adapted to” or “configured to” perform a particular function. However, with the rise of such alternative language has come a rise in the number of rejections from the U.S. Patent and Trademark Office (PTO) indicating the use of such language is merely functional and will not be given “full patentable weight” in apparatus, device, or system claims. In support of these rejections, the PTO often cites prior art that, in the mind of the patent examiner, is “capable of” performing or meeting the functional requirements of the “adapted to” or “configured to” limitation. This often entails the patent examiner applying prior art against the pending patent claims that does not specifically address the claimed “adapted to” or “configured to” function, but rather is potentially “capable of” performing the function. However, the tide may have turned in favor of the patent practitioner with the recent In re Giannelli, (2013-1167, Fed. Cir. January 14, 2014) ruling from the Federal Circuit.

The Federal Circuit reversed a decision by the PTO Patent Trial and Appeal Board (“the Board”) by Raymond Giannelli (“Giannelli”). Giannelli filed a patent application (Serial No. 10/378,261; “the ‘261 application”), entitled “Rowing Machine” in March 2003. The ‘261 application set forth Claim 1, which was directed to:

           1. A row exercise machine comprising an input assembly including a first handle portion adapted to be moved from a first position to a second position by a pulling force exerted by a user on the first handle portion in a rowing motion, the input assembly defining a substantially linear path for the first handle portion from the first position to the second position.

After prolonged examination, the patent examiner ultimately rejected the claim in light of U.S. Patent No. 5,997,447 (the “’447 patent”) that teaches a “chest press apparatus for exercising regions of the upper body,” where the user performs the exercise by “pushing” on the handles to overcome the selected resistance. Giannelli appealed the decision of the patent examiner to the Board.

The Board characterized the dispositive issue as being whether the check press machine of the ‘477 patent was “capable of being used by exerting a pulling force on the handles in a rowing motion.” In re Gannelli at 5. The Board determined it was reasonable that a user could face the handles of the chest press machine, rather than lie on the bench support, and exert a pulling force on its handles in a rowing motion. Thus, the Board premised its conclusion on the machine of the ‘447 patent being “capable of” having its handles pulled, rather than pushed.

However, the Federal Circuit reversed the Board’s decision ruling that the Board erred in concluding that the claims of the Giannelli application were obvious in view of the ‘447 patent. The Federal Circuit stated that physical capability alone of the prior art does not render obvious claims to features adapted to or configured to perform a function.

The Federal Circuit stated that the claims of the Giannelli application specifically require a “first handle portion adapted to be moved from a first position to a second position by a pulling force . . . in a rowing motion.” The Federal Circuit stated:

[w]e have noted that, ‘the phrase ‘adapted to’ is frequently used to mean ‘made to, ’designed to,’ or ‘configured to,’ . . .” citing Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012). Although the phrase can also mean “‘capable of’ or ‘suitable for,’” id., here the written description makes clear that “adapted to,” as used in the ’261 application, has a narrower meaning, viz., that the claimed machine is designed or constructed to be used as a rowing machine whereby a pulling force is exerted on the handles.

Id. at 7.

The Federal Circuit then went on to admonish the Board in stating that:

the mere capability of pulling the handles is not the inquiry that the Board should have made; it should have determined whether it would have been obvious to modify the prior art apparatus to arrive at the claimed rowing machine. Because the Board determined that the machine claimed in the ‘261 application would have been obvious by merely showing that a rowing exercise could be performed on the machine disclosed in the ’447 patent, and not whether it was obvious to modify the chest press machine to contain handles “adapted to” perform the rowing motion by pulling on them, the Board erred in concluding that the examiner had met his initial burden of establishing a case of prima facie obviousness.

Id. at 8.

Ultimately, the Federal Circuit stated that “physical capability alone does not render obvious that which is contraindicated.” Id. at 9.

It remains to be seen if and how the PTO responds to this decision, and whether other panels of the Federal Circuit will necessarily follow the reasoning of this decision. In fact, in a decision released from the Federal Circuit two days after In re Gannelli, Chief Judge Rader argued a concurring opinion in Superior Industries vs. Masaba (Fed. Cir. 2014) instructed the District Court to note that “[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 (Fed.Cir.1990). 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 (Fed. Cir. 2009).” In Superior Industries, the patentee claimed a dump truck with a “support frame . . . configured to support an end of an earthen ramp.” However, based on In re Gannelli, it is clear that not all judges in the Federal Circuit agree with Chief Judge Rader’s perspective.

Notwithstanding, in light of In re Gannelli, the PTO should now be held to a higher standard when rejecting claims employing “adapted to” or “configured to” perform a function language. Following In re Gannelli, Examiners must provide articulated support for finding that prior art is not merely “capable of” performing a claimed function, but rather must establish a prima facie case of unpatentability as to how one skilled in the relevant art could modify the prior art to read on the claims “adapted to” or “configured to” functional limitation. That is, the prior art must show purposeful construction or configuration to perform the stated function.

The tide may be shifting.

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1.  35 U.S.C. 112(f) provides a statutory basis for means-plus-function or step-plus-function language in that “[a]n element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” Prior to the America Invents Act, 35 U.S.C. 112(f) was 35 U.S.C. 112, sixth paragraph.

2. See e.g., In re Donaldson, 16 F.3d 1189, 29 U.S.P.Q.2d 1845 (Fed. Cir. 1994).