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 MoreWhat is the difference between structural elements and material worked upon in patent claims?
In patent claims, particularly apparatus claims, it’s crucial to distinguish between structural elements and material worked upon. MPEP 2115 provides guidance on this distinction: Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements. Structural elements are the physical components that make up the claimed apparatus. These are the positively recited…
Read MoreWhat is the “same article” principle in MPEP 2112.01?
What is the “same article” principle in MPEP 2112.01? The “same article” principle is explained in MPEP 2112.01 as follows: “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has…
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 MoreWhat is the legal standard for establishing a prima facie case of anticipation or obviousness in product and apparatus claims?
According to MPEP 2112.01(I), a prima facie case of either anticipation or obviousness is established when: The claimed and prior art products are identical or substantially identical in structure or composition, or The claimed and prior art products are produced by identical or substantially identical processes This principle is supported by the following quote from…
Read MoreHow does the preamble affect the interpretation of apparatus claims?
In apparatus claims, the preamble’s effect depends on whether it recites essential structure or merely states the purpose or intended use of the invention. According to MPEP 2111.02: “Any terminology in the preamble that limits the structure of the claimed invention must be treated as a claim limitation.” For example, in Corning Glass Works v.…
Read MoreWhat is the difference between preambles in apparatus claims vs. method claims?
The interpretation of preambles can differ between apparatus claims and method claims. The MPEP 2111.02 provides guidance on this distinction: For apparatus claims: Preambles often recite the intended use or purpose of the apparatus Generally, if the body of the claim fully and intrinsically sets forth the complete invention, the preamble is not considered a…
Read MoreWhat are the limitations of MPEP 2115’s guidance on material worked upon?
While MPEP 2115 provides important guidance on how material or articles worked upon affect apparatus claims, it’s crucial to understand its limitations. The MPEP states: Note that this line of cases is limited to claims directed to machinery which works upon an article or material in its intended use. This means that the principle of…
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…
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