How does MPEP 2114 address the recitation of material worked upon by an apparatus?

MPEP 2114 provides guidance on how to treat claims that include recitations of material or article worked upon by an apparatus. The key points are:

• Inclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.
• Claims directed to apparatus must be distinguished from the prior art in terms of structure rather than function.
• The manner or method in which a machine is to be utilized is not germane to the issue of patentability of the machine itself.

MPEP 2115 specifically states: “Material or Article Worked Upon Does Not Limit Apparatus Claims.” It further clarifies: “Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements. Thus, “[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963).”

This principle aligns with the general approach in MPEP 2114 that emphasizes the structure of an apparatus over its intended use or the materials it works upon.

To learn more:

• material worked upon
• apparatus claims
• structural limitations