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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