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2114 MANUAL OF PATENT EXAMINING PROCEDURE neering. While the' applicant questioned the purity of the prior art factor, no concrete evidence of anunobvions difference was presented. The Board stated that the dispositive issue is whether the claimed factor exhibits any unexpected properties compared with the factor disclosed by the prior art. The Board further stated that the applicant should have made some comparison between the two factors to establish unexpected properties since the materials appeared to' be identical or only slightly different.). THE USE OF 35 UoS.C. 102/103 REJECTIONS FORPRODUCT·BY·PROCESS CLAIMS HAS BEEN APPROVED BYTHE COURTS "[Tjhe lack of physical description ina product-byprocess claim makes determination of the patentability of the claim more difficult, since in spite of the fact that the claim may recite only process limitations, it is the patentability of the product claimed andnot of the recited process steps which must be established. We are therefore of the opinion that when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a prodnct claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 ofthe statute is eminently fair and acceptable. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith." In re Brown, 459 F.2d 531, 535, 173 USPQ 685,688 (CCPA 1972). 2114 Apparatus, arid Article Claims - Fuuctioual Language For a discussion of case law which provides guidance in interpreting thefunctional portion of meansplus-function limitations see MPEP § 2181 - § 2186. APPARATUS CLAIMS MUST BE STRUCTUR· ALLY DISTINGUISHABLE FROM THE PRIOR ART Claims directed to apparatus must be distinguished from the prior art in terms of stmcture rather than function. In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). "[A[pparatus claims cover what a device is, not what a device does." Hewlett Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, Augusr2001 2100-56 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. '1990). (emphasis in original) MANNER OF OPERATING THE DEVICE DOES NOT DIFFERENTIATE APPARATUS CLAIM FROM THE PRIOR ART A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a priorart apparatus" if the prior art apparatus teaches all the structural limitations ofthe claim. Ex parte Masham, 2 USPQ2d 1647 (Bd, Pat. App. & Inter. 1987) (The preamble of claim I recited that the apparatus was "for mixing flowing developer material" and the body of the claim recited "means for mixing ..., said mixing means being stationary and completely submerged in the developer material". The claim was rejected over li reference which taught all the stmctural limitations of the claim for the intended use oflnixing flowing developer. Howeyer, the mixer was only partially submerged in the developer material, The Board held that the amount of submersion is immaterial to the stmcture of the mixer and thus the claim was properly rejected.). A PRIORART DEVICECAN PERFORM ALL THE FbNCTIONS OF THE APPARATUS CLAIM AND STILL NOT ANTICIPATE THE CLAIM Even if the prior art device performs all the functions recited in the claim, the prior art cannot anticipate the claim if there is any stmctural difference. It should be noted, however,that means plus function limitations are met by stmctures which are equivalent to the corresponding stmctures recited in the specification. In re Ruskin, 347 F.2d 843, 146 USPQ 211 (CCPA 1965) as implicitly modified by In re Donaldson, 16F.3d 1189, 29 USPQ2d1845 (Fed. Cir. 1994). See also'In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1951 (Fed. Cir. 1999) (The claims were drawn to a disposable diaper having three fastening elements. The reference disclosed two fastening elementsthat could perform the same function as the three fastening elements in the claims. The court construed the claims to require three separate elements and held that the reference did not disclose a separate third fastening eleinent, either expressly or inherently.),
2115 Material or Article Worked Upon by Apparatus MATERIAL OR ARTICLE WORKED UPON DOES NOT LIMIT APPARATUS CLAIMS "Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim." Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Furthermore, "[i[nclusion of material or article worked upon by a structure beingclaimed does not impart patentability to the claims." In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963». In In re 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 itself. The court held that the inclusion of the article formed within the body of the claim did not, without more, make the claim patentable. 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 supporting structure, said brush being formed with projecting bristles which terminate in free ends to collectively define a surface to which adhesive tape will detachably adhere, and means for providing relative motion between said brush and said supporting structure while said adhesive tape is adhered to said surface." An obviousness rejection was made over a reference to Kienzle which taught a machine for perforating sheets. The court upheld the rejection stating that "the references in claim 1 to adhesive tape handling do not expressly or impliedly require any particular structure in addition. to that of Kienzle." The perforating device had. the structure of the taping device as claimed, the difference was in the use of the device, and "the manner or method in which such machine is to be utilized is not germane to the issue of patentability of the machine itself." Note that this line of cases is limited to claims directed to machinery which works upon an article or material in its intended use. It does not apply to product claims or kit claims (i.e., claims directed to a plurality of articles grouped together as a kit). PATENTABILITY 2115 2116 MaterialManipulated in Process The materials on which a process is carried out must be accorded weight in determining the patent' ability of a process. Ex parte Leonard, 187 USPQ 122 (Ed. App. 1974). 2116.01 Novel, Unobvious Starting Material or End Product All the limitations of a claim must be considered when weighing the differences between the claimed invention and the prior art in determining the obviousness of a process or method claim. See MPEP § 2143.03. In re Ochiai, 71 F.3d 1565, 37 USPQ2d 1127 (Fed. Cir. 1995) and In re Brouwer, 77 F.3d 422, 37 USPQ2d 1663 (Fed. Cir. 1996) addressed the issue of whether an otherwise conventional process could be patented if it were limited to making or using a nonobvious product. Inboth cases, the Federal Circuit held that the use of per se rules is improper in applying the test for obviousness under 35 U.S.c. 103. Rather, 35 U.S.c. 103 requires a highly fact-dependent analysis involving taking the claimed subject matter as a whole and comparing it to the prior art. To support a rejection under 35 U.S.C. 103, the collective teachings of the prior art must have suggested to oue of ordinary skill in the art that, at the time the invention was made, applicant's claimed invention would have been obvious. In applying this test to the claims on appeal in Ochiai and Brouwer, the court held that there simply was no suggestion or motivation in the prior art to make or use novel, nonobvious products in the claimed processes. Consequently, the court overturned the rejections based upon 35 U.S.c. 103. Interpreting the claimed invention as a whole requires consideration of all claim limitations. Thus, proper claim construction requires treating language in a process claim which recites the making or using of a nonobvious product as a material limitation. Motivation to make or use the nonobvious product must be present in the prior art for a 35 U.S.C. 103 rejection to be sustained. The decision in Ochiai specifically dispelled any distinction between processes of making a product and methods of using a product with regard to the effect of any product limitations in either type of claim. 2100-57 August 2001
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