Thursday, July 25, 2013

PTAB reverses examiner in TANIGUCHI case

The Board reversed the Examiner’s § 102(b) rejection in Ex parte TANIGUCHI

Schreiber is cited:

Although it is well established that claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function, see, e.g., In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997), in order to satisfy the functional limitations in an apparatus claim, however, the prior art apparatus must be capable of performing the claimed function. Id. at 1478. As such, to be capable of performing the functional limitations in claim 1, the output limiter must possess the necessary structure, hardware or software, for example, the programming, to function as claimed. The Examiner indeed de facto admits that Okura is not programmed or otherwise structured to function as claimed, and the Examiner does not rely upon any reasoning why one of ordinary skill in the art would have been motivated to have configured the output limiter to function as claimed (see generally Ans.).

PTAB cited other cases

the “capable of” test requires that the prior art structure be capable of performing the function without further programming. Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011) (discussing Microprocessor Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d 1367 (Fed. Cir. 2008)). When the functional language is associated with programming or some other structure required to perform the function, that programming or structure must be present in order to meet the claim limitation. Id. While in some circumstances generic structural disclosures may be sufficient to meet the requirements of a “controller”, see Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1364 (Fed. Cir. 2012) (citing Telcordia Techs., Inc. v. Cisco Sys., Inc., 612 F.3d 1365, 1376–77 (Fed. Cir. 2010)), that is not the case here.


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