What is the difference between structural and functional limitations in apparatus claims?
In apparatus claims, features can be recited either structurally or functionally. As stated in MPEP 2114: “Features of an apparatus may be recited either structurally or functionally. In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997).” Structural limitations describe the physical components of the apparatus, while functional limitations describe what…
Read MoreCan a prior art device that performs all functions of an apparatus claim still not anticipate the claim?
Yes, a prior art device can perform all the functions recited in an apparatus claim and still not anticipate the claim if there is any structural difference. According to MPEP 2114: “Even if the prior art device performs all the functions recited in the claim, the prior art cannot anticipate the claim if there is…
Read MoreHow does MPEP 2114 relate to product-by-process claims?
While MPEP 2114 primarily focuses on apparatus and article claims with functional language, it also touches on product-by-process claims, which are a special type of product claim. The key points relating to product-by-process claims are: Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. If…
Read MoreHow 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…
Read MoreHow does MPEP 2114 apply to functional language in apparatus claims?
MPEP 2114 provides guidance on how to evaluate functional language in apparatus claims. The key points are: Functional language in apparatus claims is limited to what the claimed structure is capable of doing, not what it actually does in operation. If the prior art structure is capable of performing the intended use, it meets the…
Read MoreHow does MPEP 2114 address computer-implemented functional claim limitations?
MPEP 2114 provides specific guidance on computer-implemented functional claim limitations. Key points include: For computer-implemented functional claim limitations, the specification must disclose an algorithm for performing the claimed function. If the specification does not provide a disclosure of the computer and algorithm in sufficient detail, a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C.…
Read MoreHow does MPEP 2114 differentiate between apparatus claims and method claims?
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…
Read MoreHow does MPEP 2114 treat recitations of the manner in which an apparatus is intended to be employed?
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…
Read MoreHow are computer-implemented functional claim limitations interpreted in patent examination?
Computer-implemented functional claim limitations are interpreted broadly in patent examination. According to MPEP 2114: “Functional claim language that is not limited to a specific structure covers all devices that are capable of performing the recited function.” This means that if a prior art device can inherently perform the claimed function, it may be grounds for…
Read MoreHow does the manner of operating a device affect apparatus claims?
The manner of operating a device generally does not differentiate an apparatus claim from the prior art. As stated in MPEP 2114: “[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).…
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