How does the manner of operating a device affect apparatus claims?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-29 10 Rules 5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. 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). This means that if a prior art device has all the structural limitations of the claimed apparatus, the manner in which the device is intended to be used does not differentiate it from the prior art. The focus is on the structure of the device, not its operation. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Computer-Implemented Functional Language Narrows Apparatus Claims MPEP 2114 Inherent Functional Limitation of Prior Art MPEP 2114 Permitted Functional Claim Covers All Capable Devices MPEP 2114 Permitted Applicant Must Prove Prior Art Does Not Possess Characteristic Relied On MPEP 2114 Permitted Claim Language Covers Capable Devices MPEP 2114 Required Claims Including Software Must Be Construed as Hardware and Software Combination MPEP 2114 Prohibited Examiner Must Explain Inherent Functionality to Establish Anticipation or Obviousness MPEP 2114 Recommended Guidance for Interpreting Functional Limitations in Claims MPEP 2114 Functional Claim Language Covers All Capable Devices MPEP 2114 Claimed Circuitry Must Be Capable of Performing Function MPEP 2114 Other Related FAQs 5 FAQs Collapse What is the difference between &#8216;capable of&#8217; and &#8216;configured to&#8217; in patent claims? How are computer-implemented functional claim limitations interpreted in patent examination? How does MPEP 2114 treat recitations of the manner in whi...