Wednesday, January 23, 2013

Non-functional descriptive material in OKAMOTO

The claim element at stake in an article claim in Ex parte OKAMOTO :

a display unit operable to display the synthetic image.

But we conclude that the above-disputed limitation of a unit “operable” to generate a synthetic image including particular types of data is merely a statement of intended use or purpose regarding the recited unit in independent apparatus claim 1. “An ] intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed.Cir. 2003). Here, the disputed functional limitation “to generate” is not positively recited as actually being performed (see claim 1), but rather is merely a step that the unit is capable of performing.


The informational content of non-functional descriptive material is not entitled to weight in the patentability analysis. See In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (“Lowry does not claim merely the information content of a memory. . . . Nor does he seek to patent the content of information resident in a database.”). See also Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential); Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005) (informative) (Federal Circuit Appeal No. 2006-1003, aff’d, Rule 36 (June 12, 2006)); Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (informative), aff’d, 191 Fed. Appx. 959 (Fed. Cir. 2006).


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