How do “adapted to” clauses affect the patentability of an invention?
“Adapted to” clauses can affect the patentability of an invention by potentially limiting or defining the scope of the claims. According to MPEP 2111.04:
“Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure.”
However, “adapted to” clauses can be limiting in certain circumstances. The MPEP cites the In re Giannelli case, where the court found that an “adapted to” clause limited a machine claim. The court stated:
“The written description makes clear that ‘adapted to,’ as used in the [patent] application, has a narrower meaning, viz., that the claimed machine is designed or constructed to be used as a rowing machine whereby a pulling force is exerted on the handles.”
When assessing patentability:
- Examine the written description to determine if “adapted to” has a specific, limiting meaning.
- Consider whether the clause imparts a structural limitation or merely describes an intended use.
- Evaluate how the clause affects the claim’s scope compared to the prior art.
Patent attorneys and examiners should carefully analyze “adapted to” clauses to determine their impact on claim scope and patentability.
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