Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 2100 – Patentability (5)
MPEP 2114 provides guidance on distinguishing apparatus claims from method claims, particularly when functional language is involved. The manual states:
“While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function.”
This means that for apparatus claims, the focus should be on the structural elements rather than how the apparatus functions. In contrast, method claims are defined by the steps or actions performed. The MPEP further clarifies:
“The recitation of a new intended use for an old product does not make a claim to that old product patentable.”
This highlights that merely describing a new way to use an existing apparatus doesn’t make it patentable. To be patentable, an apparatus claim must have structural differences from the prior art. If an applicant wants to protect a specific way of using an apparatus, they should consider filing method claims in addition to apparatus claims.
To learn more:
MPEP 2114 addresses recitations of the manner in which an apparatus is intended to be employed. According to the manual:
“[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original).
This means that the manner of operating the device does not differentiate apparatus claims from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. The MPEP further states:
“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. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)”
This guidance emphasizes that the focus should be on the structural limitations of the apparatus claim, rather than its intended use.
To learn more:
In patent claims, particularly for apparatus claims, the phrases “capable of” and “configured to” can have different implications:
- “Capable of” generally refers to an inherent ability or potential of the structure to perform a function, even if it’s not specifically designed for that purpose.
- “Configured to” implies that the structure is specifically designed or arranged to perform the stated function.
According to MPEP 2114, “[A]pparatus claims cover what a device is, not what a device does.” This means that the capability of a prior art device to perform the claimed function is often sufficient to anticipate the claim, regardless of whether it’s explicitly stated to be “configured to” perform that function.
However, “configured to” language may be given more weight if it implies structural modifications that are not present in a prior art reference that is merely “capable of” performing the function.
To learn more:
The material or article worked upon generally does not limit apparatus claims. As stated in MPEP 2115: “Inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.” This principle is based on legal precedents such as In re Otto and In re Young.
The MPEP further explains: “Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements.” This means that the focus should be on the structural elements of the apparatus itself, not the materials it processes.
To learn more:
Yes, method claims can reference limitations from apparatus claims, as long as the reference is clear and does not introduce confusion. The MPEP 2173.05(f) provides an example of an acceptable reference:
“A method of producing ethanol comprising contacting amylose with the culture of claim 1 under the following conditions …..”
Additionally, the MPEP cites a relevant case:
“See also Ex parte Porter, 25 USPQ2d 1144 (Bd. Pat. App. & Inter. 1992) (where reference to “the nozzle of claim 7″ in a method claim was held to comply with 35 U.S.C. 112, second paragraph).”
These examples demonstrate that method claims can reference specific elements or entire apparatus claims, provided the reference is clear and does not create indefiniteness issues.
To learn more:
MPEP 2114 – Apparatus And Article Claims — Functional Language (3)
MPEP 2114 provides guidance on distinguishing apparatus claims from method claims, particularly when functional language is involved. The manual states:
“While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function.”
This means that for apparatus claims, the focus should be on the structural elements rather than how the apparatus functions. In contrast, method claims are defined by the steps or actions performed. The MPEP further clarifies:
“The recitation of a new intended use for an old product does not make a claim to that old product patentable.”
This highlights that merely describing a new way to use an existing apparatus doesn’t make it patentable. To be patentable, an apparatus claim must have structural differences from the prior art. If an applicant wants to protect a specific way of using an apparatus, they should consider filing method claims in addition to apparatus claims.
To learn more:
MPEP 2114 addresses recitations of the manner in which an apparatus is intended to be employed. According to the manual:
“[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original).
This means that the manner of operating the device does not differentiate apparatus claims from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. The MPEP further states:
“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. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)”
This guidance emphasizes that the focus should be on the structural limitations of the apparatus claim, rather than its intended use.
To learn more:
In patent claims, particularly for apparatus claims, the phrases “capable of” and “configured to” can have different implications:
- “Capable of” generally refers to an inherent ability or potential of the structure to perform a function, even if it’s not specifically designed for that purpose.
- “Configured to” implies that the structure is specifically designed or arranged to perform the stated function.
According to MPEP 2114, “[A]pparatus claims cover what a device is, not what a device does.” This means that the capability of a prior art device to perform the claimed function is often sufficient to anticipate the claim, regardless of whether it’s explicitly stated to be “configured to” perform that function.
However, “configured to” language may be given more weight if it implies structural modifications that are not present in a prior art reference that is merely “capable of” performing the function.
To learn more:
MPEP 2115 – Material Or Article Worked Upon By Apparatus (1)
The material or article worked upon generally does not limit apparatus claims. As stated in MPEP 2115: “Inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.” This principle is based on legal precedents such as In re Otto and In re Young.
The MPEP further explains: “Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements.” This means that the focus should be on the structural elements of the apparatus itself, not the materials it processes.
To learn more:
MPEP 2173.05(F) – Reference To Limitations In Another Claim (1)
Yes, method claims can reference limitations from apparatus claims, as long as the reference is clear and does not introduce confusion. The MPEP 2173.05(f) provides an example of an acceptable reference:
“A method of producing ethanol comprising contacting amylose with the culture of claim 1 under the following conditions …..”
Additionally, the MPEP cites a relevant case:
“See also Ex parte Porter, 25 USPQ2d 1144 (Bd. Pat. App. & Inter. 1992) (where reference to “the nozzle of claim 7″ in a method claim was held to comply with 35 U.S.C. 112, second paragraph).”
These examples demonstrate that method claims can reference specific elements or entire apparatus claims, provided the reference is clear and does not create indefiniteness issues.
To learn more:
Patent Law (5)
MPEP 2114 provides guidance on distinguishing apparatus claims from method claims, particularly when functional language is involved. The manual states:
“While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function.”
This means that for apparatus claims, the focus should be on the structural elements rather than how the apparatus functions. In contrast, method claims are defined by the steps or actions performed. The MPEP further clarifies:
“The recitation of a new intended use for an old product does not make a claim to that old product patentable.”
This highlights that merely describing a new way to use an existing apparatus doesn’t make it patentable. To be patentable, an apparatus claim must have structural differences from the prior art. If an applicant wants to protect a specific way of using an apparatus, they should consider filing method claims in addition to apparatus claims.
To learn more:
MPEP 2114 addresses recitations of the manner in which an apparatus is intended to be employed. According to the manual:
“[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original).
This means that the manner of operating the device does not differentiate apparatus claims from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. The MPEP further states:
“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. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)”
This guidance emphasizes that the focus should be on the structural limitations of the apparatus claim, rather than its intended use.
To learn more:
In patent claims, particularly for apparatus claims, the phrases “capable of” and “configured to” can have different implications:
- “Capable of” generally refers to an inherent ability or potential of the structure to perform a function, even if it’s not specifically designed for that purpose.
- “Configured to” implies that the structure is specifically designed or arranged to perform the stated function.
According to MPEP 2114, “[A]pparatus claims cover what a device is, not what a device does.” This means that the capability of a prior art device to perform the claimed function is often sufficient to anticipate the claim, regardless of whether it’s explicitly stated to be “configured to” perform that function.
However, “configured to” language may be given more weight if it implies structural modifications that are not present in a prior art reference that is merely “capable of” performing the function.
To learn more:
The material or article worked upon generally does not limit apparatus claims. As stated in MPEP 2115: “Inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.” This principle is based on legal precedents such as In re Otto and In re Young.
The MPEP further explains: “Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements.” This means that the focus should be on the structural elements of the apparatus itself, not the materials it processes.
To learn more:
Yes, method claims can reference limitations from apparatus claims, as long as the reference is clear and does not introduce confusion. The MPEP 2173.05(f) provides an example of an acceptable reference:
“A method of producing ethanol comprising contacting amylose with the culture of claim 1 under the following conditions …..”
Additionally, the MPEP cites a relevant case:
“See also Ex parte Porter, 25 USPQ2d 1144 (Bd. Pat. App. & Inter. 1992) (where reference to “the nozzle of claim 7″ in a method claim was held to comply with 35 U.S.C. 112, second paragraph).”
These examples demonstrate that method claims can reference specific elements or entire apparatus claims, provided the reference is clear and does not create indefiniteness issues.
To learn more:
Patent Procedure (5)
MPEP 2114 provides guidance on distinguishing apparatus claims from method claims, particularly when functional language is involved. The manual states:
“While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function.”
This means that for apparatus claims, the focus should be on the structural elements rather than how the apparatus functions. In contrast, method claims are defined by the steps or actions performed. The MPEP further clarifies:
“The recitation of a new intended use for an old product does not make a claim to that old product patentable.”
This highlights that merely describing a new way to use an existing apparatus doesn’t make it patentable. To be patentable, an apparatus claim must have structural differences from the prior art. If an applicant wants to protect a specific way of using an apparatus, they should consider filing method claims in addition to apparatus claims.
To learn more:
MPEP 2114 addresses recitations of the manner in which an apparatus is intended to be employed. According to the manual:
“[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original).
This means that the manner of operating the device does not differentiate apparatus claims from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. The MPEP further states:
“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. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)”
This guidance emphasizes that the focus should be on the structural limitations of the apparatus claim, rather than its intended use.
To learn more:
In patent claims, particularly for apparatus claims, the phrases “capable of” and “configured to” can have different implications:
- “Capable of” generally refers to an inherent ability or potential of the structure to perform a function, even if it’s not specifically designed for that purpose.
- “Configured to” implies that the structure is specifically designed or arranged to perform the stated function.
According to MPEP 2114, “[A]pparatus claims cover what a device is, not what a device does.” This means that the capability of a prior art device to perform the claimed function is often sufficient to anticipate the claim, regardless of whether it’s explicitly stated to be “configured to” perform that function.
However, “configured to” language may be given more weight if it implies structural modifications that are not present in a prior art reference that is merely “capable of” performing the function.
To learn more:
The material or article worked upon generally does not limit apparatus claims. As stated in MPEP 2115: “Inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.” This principle is based on legal precedents such as In re Otto and In re Young.
The MPEP further explains: “Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements.” This means that the focus should be on the structural elements of the apparatus itself, not the materials it processes.
To learn more:
Yes, method claims can reference limitations from apparatus claims, as long as the reference is clear and does not introduce confusion. The MPEP 2173.05(f) provides an example of an acceptable reference:
“A method of producing ethanol comprising contacting amylose with the culture of claim 1 under the following conditions …..”
Additionally, the MPEP cites a relevant case:
“See also Ex parte Porter, 25 USPQ2d 1144 (Bd. Pat. App. & Inter. 1992) (where reference to “the nozzle of claim 7″ in a method claim was held to comply with 35 U.S.C. 112, second paragraph).”
These examples demonstrate that method claims can reference specific elements or entire apparatus claims, provided the reference is clear and does not create indefiniteness issues.
To learn more: