Friday, June 07, 2013

Apparatus claims must be distinguished from prior art based on structure, not function or result

The Board affirmed the examiner in Ex parte STAVENJORD

As to apparatus claims:

Claims directed to an apparatus must be
distinguished from the prior art in terms of structure rather than function.
See In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997).

Also see, In re Gardiner, 171 F.2d 313, 315-16 (CCPA 1948) (“the
patentability of apparatus claims must be shown in the structure claimed and
not merely upon a use, function, or result thereof”).

The Board made an "In re Best" argument, but did not cite Best:

“[W]hen the PTO shows sound basis for believing that the products of
the applicant and the prior art are the same, the applicant has the burden of
showing that they are not.” In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990)
(citing In re King, 801, F.2d 1324, 1327 (Fed. Cir. 1986) and In re Ludtke,
441 F.2d 660, 664 (CCPA 1971)).


it is not necessary for the prior art
to serve the same purpose as that disclosed in Appellant’s Specification in
order to support the conclusion that the claimed subject matter would have
been obvious.5

5 See In re Linter, 458 F.2d 1013, 1016 (CCPA 1972). See also In re
Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012), citing KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418-421 (2007) (“A reference may be read for
all that it teaches, including uses beyond its primary purpose.”).


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