How 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 does MPEP 2112.01 address material or article worked upon by apparatus?
How does MPEP 2112.01 address material or article worked upon by apparatus? MPEP 2112.01 provides guidance on how to treat claims involving materials or articles worked upon by an apparatus. The manual states: “The materials or articles worked upon by the apparatus do not limit apparatus claims.” This principle is important for patent examiners and…
Read MoreCan method claims reference limitations from apparatus claims?
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…
Read MoreHow does the material or article worked upon affect apparatus claims?
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…
Read MoreHow does In re Young affect patent claim interpretation?
In re Young is another important case cited in MPEP 2115 that affects patent claim interpretation, particularly for apparatus claims. The MPEP states: In Young, a claim to a machine for making concrete beams included a limitation to the concrete reinforced members made by the machine as well as the structural elements of the machine…
Read MoreWhat is the significance of In re Otto in patent law?
In re Otto is a significant case in patent law, particularly for apparatus claims. According to MPEP 2115, the case established that: “[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) The…
Read MoreHow does In re Casey relate to material worked upon in patent claims?
In re Casey is another significant case discussed in MPEP 2115 that relates to material worked upon in patent claims. The MPEP summarizes the case as follows: In In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967), an apparatus claim recited “[a] taping machine comprising a supporting structure, a brush attached to said…
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).…
Read MoreWhat is the difference between ‘capable of’ and ‘configured to’ in patent claims?
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…
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