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[patentwind]

hi all,

I received a office action, the examiner asserts that the phrase "adapted to" in claim does not construe a limitation to the claim according to MPEP 2111.04, and suggests to delete the phrase "adapted to". I think "adapted to" is a very popular phrase used in claims, and I find many many issued patents having the phrase "adapted to" in their claims, that means "adapted to" is not excluded in claims. However, MPEP 2111.04 does point out the problem of "adapted to", in this situation how do I respond this office action? Why this examiner made such an objection, but many other exminers did not?

Thanks

[JustAnotherExaminer]

hi all,

I received a office action, the examiner asserts that the phrase "adapted to" in claim does not construe a limitation to the claim according to MPEP 2111.04, and suggests to delete the phrase "adapted to". I think "adapted to" is a very popular phrase used in claims, and I find many many issued patents having the phrase "adapted to" in their claims, that means "adapted to" is not excluded in claims. However, MPEP 2111.04 does point out the problem of "adapted to", in this situation how do I respond this office action? Why this examiner made such an objection, but many other exminers did not?

Thanks

It's an instant red-flag in my examination process. Along with phrases like "operable for/to" or "configurable for/to". The examiner made the objection because the examiner is a good examiner and knows what they're doing.  Believe it or not, he's doing you a favor if this ever goes to litigation.  I'd recommend deleting the phrase, like he suggests, or changing it to a well-defined functional transitional phrase.

[jc4patents]

   My experience is that phrases such as "adapted to", "configured to",
and "arranged to" are perfectly good structural phases. There is nothing
wrong with reciting "a feedback loop configured to --------" in an independent
claim and then reciting in a dependent claim, "wherein said feedback loop
includes elements A and B and C coupled between said A and said B".

    90% of the time, the Examiner will have no objections but now and again
you will run into an Examiner who recites one of the hundreds of examples
in the MPEP and objects. Just go along with the Examiner when you get one of
these and amend to some other language - but don't give up using such phrasing
in your next application - it is perfectly good structural language (assuming you
have detailed embodiments recited in your spec and dwgs)

[Examinerguy]

I have to agree with the examiner above. Adapted to, configured to, etc. are all phrases I point out to the applicant on the first action. By the time I allow the application I want none of those phrases to be in the claim language.

It is kind of like saying, "a car adapted to have power steering." Well...does that mean your car HAS power steering? I'm in the camp that the applicant should be telling the examiner exactly what his or her invention is and not what it is capable of. If your car HAS power steering say, "a car with power steering."

</end rant>

[vman11]

jeez, what is this, the examiner moral brigade? Next, you guys will reject an application with "comprising" in claims.

just do your job guys, stop making up the law as you go along.

[Examinerguy]

It's in the MPEP And it makes our lives a little bit easier. We aren't the ones getting paid the big bucks to comply with the MPEP, you guys are.

[xephay]

- no good in claims: "adapted to", "capable of", "operable to", "suitable to", etc.; e.g., receiver operable to receive signals
- also no good: "can", "maybe", "should", etc.
- usually applicants simply change to "configured to" or "is/are" and those are considered acceptable; e.g., receiver configured to receive signals, or receiver is to receive signal

a case i submitted (during the promotion cycle prior to entering the program) got returned for not having caught "operable to" in the claims.

[vman11]

Yeah xephay that's what u and I think. The examiners if u notice killed " configured to" as well.

Where in the MPEP did u guys find that? Or is this some internal PTO memo.

[dablueman]

Yeah xephay that's what u and I think. The examiners if u notice killed " configured to" as well.

Where in the MPEP did u guys find that? Or is this some internal PTO memo.

It's 2111.04, the list in 2111.04 is not exhaustive. "configured to" has the same affect as "adapted to" and is indicative of functional language in what is normally a claim to a system/apparatus.

[TataBox]

hi all,

I received a office action, the examiner asserts that the phrase "adapted to" in claim does not construe a limitation to the claim according to MPEP 2111.04, and suggests to delete the phrase "adapted to". I think "adapted to" is a very popular phrase used in claims, and I find many many issued patents having the phrase "adapted to" in their claims, that means "adapted to" is not excluded in claims. However, MPEP 2111.04 does point out the problem of "adapted to", in this situation how do I respond this office action? Why this examiner made such an objection, but many other exminers did not?

Thanks

  Believe it or not, he's doing you a favor if this ever goes to litigation.

Do you have any support for this?

[Isaac]

It's 2111.04, the list in 2111.04 is not exhaustive. "configured to" has the same affect as "adapted to" and is indicative of functional language in what is normally a claim to a system/apparatus.

The MPEP indicates that "adapted to" raises a question about limiting effect without giving very much guidance on deciding the issue.   If an examiner has a "per se" rule about such limitations, the examiner is probably going to be wrong at least occasionally.  There can be a question about whether challenging an examiner who gives "configured to" no weight is going to be a product use of the applicant's time and money.   I haven't run into examiners who refuse to give weight to any and all wherein or whereby clauses, but apparently "adapted to" is a different matter.

[vman11]

MPEP 2111.04

2111.04 "Adapted to," "Adapted for," "Wherein," and "Whereby" Clauses [R-3]

Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure. However, examples of claim language, although not exhaustive, that may raise a question as to the limiting effect of the language in a claim are:

(A) "adapted to" or "adapted for" clauses;

(B) "wherein" clauses; and

(C) "whereby" clauses.

The determination of whether each of these clauses is a limitation in a claim depends on the specific facts of the case.

It seems to me that the aforementioned language may have a limiting effect in terms of its scope when used in claims. Which part of this allows you guys to disallow practitioners from using the language in claims per se?

[PatentDave]

This discussion thread itself shows the ambiguity that comes from such a phrase.  Is it limiting or not?  The one thing that is certain is that people have a hard time coming to a consensus.  Therefore, it is indefinite in my mind.

I know there's a whole following of practitioners who put ambiguous lingo in their claims to ward off would-be infringers or attempt to improperly broaden claim scope through later interpretation. 

But I believe that the strongest patents are those you know will stand up in court.  I would change the "adapted to" phrase to "is" or "having" or whatever is appropriate.  If that feature is not required for patentability, then it should never have been there in the first place, and I'd attempt to ax it.

[vman11]

Whether a practitioner wants to use claim language which may or may not partially limit the claim scope is up to the practitioner.

My argument is that 2111.04 does not authorize the examiner to reject a claim based on existence of these terms (particularly "configured to" because this is further extrapolation of whats in the MPEP).

 

Therefore, it is indefinite in my mind

Well, then every claim which uses "comprising" is indefinite.

The argument I make is that despite the challenges examiners face in regards to time, it is important they realize whats in the MPEP and what they can and should reject and accept. If they have a well thrashed out rationale, perhaps they should share it with the rest of us so that we can learn.

[mk1023]

My reading of 2111.04 now (and the way I've been told by my SPE to examine these types of limitations) is that it's up to the examiner to make a judgment of whether language following those types of clauses is actually limiting. For instance, given:
1) a knife adapted to kill a person
2) a knife adapted to have an ivory handle

Clearly #2 is limited to knives with ivory handles whereas #1 is more intended use.


I was actually taught in the training academy to include a statement like "the adapted to language in claim 1 is not positively recited and therefore will not be considered by the examiner." So I'd get claims like: "a device adapted to: do W, X, Y, Z" and just reject it with any device. Obviously I don't pull stuff like that any more, but it wouldn't surprise me if others did.