2114 Apparatus and Article Claims — Functional Language
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I. INHERENCY AND FUNCTIONAL LIMITATIONS IN APPARATUS CLAIMS
Features of an apparatus may be recited either structurally or functionally.
- If an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus.
- The burden then shifts to applicant to establish that the prior art does not possess the characteristic relied on.
II. MANNER OF OPERATING THE DEVICE DOES NOT DIFFERENTIATE APPARATUS CLAIM FROM THE PRIOR ART
“[A]pparatus claims cover what a device is, not what a device does.”
A claim containing 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.
III. A PRIOR ART DEVICE CAN PERFORM ALL THE FUNCTIONS OF THE APPARATUS CLAIM AND STILL NOT ANTICIPATE THE CLAIM
Even if the prior art device performs all the functions recited in the claim, the prior art cannot anticipate the claim if there is any structural difference. It should be noted, however, that means-plus-function limitations are met by structures which are equivalent to the corresponding structures recited in the specification.
IV. DETERMINING WHETHER A COMPUTER-IMPLEMENTED FUNCTIONAL CLAIM LIMITATION IS PATENTABLE OVER THE PRIOR ART UNDER 35 U.S.C. 102 AND 103
Functional claim language that is not limited to a specific structure covers all devices that are capable of performing the recited function. Therefore, if the prior art discloses a device that can inherently perform the claimed function, a rejection under 35 U.S.C. 102 and/or 35 U.S.C. 103 may be appropriate.
Computer-implemented functional claim limitations may narrow the functionality of the device, by limiting the specific structure capable of performing the recited function.
Computer-implemented functional claim limitations may also be broad because the term “computer” is commonly understood by one of ordinary skill in the art to describe a variety of devices with varying degrees of complexity and capabilities.
When determining whether a computer-implemented functional claim would have been obvious, examiners should note that broadly claiming an automated means to replace a manual function to accomplish the same result does not distinguish over the prior art.
