Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[Isaac]

"A transmitter that transmits at 1 MHz" still could be interpreted as a transmitter that's actively transmitting

Maybe that interpretation is not precluded grammatically, but there is a huge amount of case law suggesting that such phrasing is functional language rather than action language.   The context in which the phrasing really determines whether an action or functional language is intended.  As an example, look at the language in claim 1 that was apparently not a problem in the IPXL v. Amazon case and in contrast, the language that doomed claim 25.

[still_learnin]

dablueman wrote, on 09-16-09 at 10:38 pm
>Depending on what follows the "configured to", the examiner is making a
>determination to give, or not give, the language following "configured to",
>"adapted to", etc.  patentable weight....
>The use of such terms is troubling for several reasons. First, they're typically
>found in apparatus/system claims and yet almost never recite structure. Instead
>they're normally geared toward the function...

I prosecute cases mostly in art units 2100, 2400, and 2600, and so use "configured to" all the time. Something like "a transmitter configured to convolutionally encode".

Absolutely this is functional language, because I don't want to claim a specific structure....I want to catch an infringer that uses a DSP to do the encoding, or an ASIC, or an off-the-shelf-encoder chip, etc., etc.

I think Wiscagent hit the nail on the head: there are differences between a transmitter configured to convolutionally encode and one that's not so configured, and the posita understands that.

I suspect these rejections vary greatly depending on the art unit/technology. Personally, I see very few rejections in which the functional language is ignored and the Examiner uses a teaching of a bare transmitter with no encoding.

Karen Hazzah
New Patent Prosecution Blog
http://allthingspros.blogspot.com/

[dablueman]

I think Wiscagent hit the nail on the head: there are differences between a transmitter configured to convolutionally encode and one that's not so configured, and the posita understands that.

I understand what you're saying and why you want the functional language, and yes a PHOSITA would understand that there is a difference. However, that's not the current law as I understand it. In the apparatus claim you MUST distinguish your invention from the prior art based on the structure, not the function it is configured to possibly do. Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469(Fed. Cir. 1990).

Note that using "configured to" doesn't mean the structure actually performs that function, only that it has the ability to do it. You're not catching the user in the apparatus claim, you're catching the manufacturer. The method claim catches the user that "uses a DSP to do the encoding,..." and in the method claim such functional language is perfectly fine (provided it meets the new 101 guidance).

If the transmitter does convolutionally encode, then in the apparatus claim you can add a convolutionary encoder as a structural element or you can add the functional language you want with a invocation of 112, 6th paragraph (i.e. means for convolutional encoding).

If there is case law that overturns HP v. Bausch & Lomb, please let me know.

[still_learnin]

Isaac wrote on 9/17:

>I agree that adapted to is can be pretty flimsy and that configured is better,
>but I'd Just state things in functional terms.  For example:
>A tranmitter that transmits at 1Mhz.

and Isaac followed up on 9/22 with:

>there is a huge amount of case law suggesting that such phrasing
>[transmitter that transmits]
>is functional language rather than action language.   The context in which the
>phrasing really determines whether an action or functional language is intended.

I too have been taught to prefer the "configured to" format and avoid the "that Xs" format. Basically the same "easier to catch infringers" reason that smgsmc stated: a device sitting in a box infringes "configured to" so you can sue the manufacturer, but a claim which says "Xing" isn't infringed until the device is put in operation.

I don't recall any caselaw on this other than the IPXL case. The question of whether Widget-that-Xs is functional or action language does seem like a basic  question that would have been decided by the courts long ago, and then wouldn't be litigated again -- so maybe that's why I don't remember seeing such a case.

The claim in IPXL used a wherein clause:

The system of claim 2 [including an input means] wherein the predicted transaction information comprises [blah, blah] and the user uses the input means to [more description of usage]

Do you think an apparatus claim "wherein the transmitter transmits at 1 GHz" is any different than "a transmitter that transmits at 1 GHz" ? Either in terms of actions required for infringement or in terms of patentable weight?

[Isaac]

I too have been taught to prefer the "configured to" format and avoid the "that Xs" format. Basically the same "easier to catch infringers" reason that smgsmc stated: a device sitting in a box infringes "configured to" so you can sue the manufacturer, but a claim which says "Xing" isn't infringed until the device is put in operation.

If your device or apparatus claim actually requires a device to be put in action, the claim is invalid under 35 USC 112, 2nd paragraph.   When you recite structure in functional terms, you have to walk the line between making sure you recite an actual feature rather than a capability to have the feature.   If you look at all of the claims in the IPXL case, there were claims where Xing was just fine, but there was the one claim where the practitioner managed to imply an action without any use of "ing."

[still_learnin]

dablueman wrote, on September 21

>However, that's not the current law as I understand it. In the apparatus claim you MUST distinguish your invention
>from the prior art based on the structure, not the function it is configured to possibly do.
>Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469(Fed. Cir. 1990).

Agreed - don't think anything said here so far contradicts your statement. But I would emphasize the word possibly. Precisely how to claim function in a way that makes it clear we're excluding "possibly" is one of the things we've been focusing on, right? The other thing being how to do the first in a way that isn't indefinite under IPXL v. Amazon.

[still_learnin]

We've been talking about how to claim function in a way that ensures the function is given patentable weight. Does it boil down to using phrases that say function but also imply structure? I see this is a big difference between mechanical cases and electronic/computer cases.

For example, what about: An apparatus comprising: an axle; and a wheel rotatable about the axle.

Surely rotatable is not itself structure. So I suppose it's function. Even so, to describe the wheel in that way does seem to imply something about the structure of the wheel and the axle.

Same analysis for a wheel operable to rotate about the axle. But contrast with: An apparatus comprising: a transmitter operable to transmit at 1 GHz.

[Ignore the questionable operable to for now.] Skeptics would say that the structure implied is no different than that of a transmitter operable to transmit at 40 kHz. I disagree, but I see how reasonable minds can differ.

Am I on the right track in understanding why some forms of functional language are acceptable and some are not?

In doing this exercise, I see one thing I haven't considered much before. Namely, if I avoid all constructions like configured to, operable to, adapted to, etc. and use only "action" phrases, my example seems to fall apart. That is, when I write a transmitter transmitting at 1 GHz, I've almost convinced myself that the implied structure is no different than any other transmitter.

So if action-oriented functional language like "transmitting at 1 GHz" is given patentable weight -- and seems like all agree it is -- the reason can't be that it implies something about structure. Can it?

Karen Hazzah
New Patent Prosecution Blog
http://allthingspros.blogspot.com/

[vman11]

Am I on the right track in understanding why some forms of functional language are acceptable and some are not?

yes

Yeah the functional interpretation can't co-exist in a claim for a system/ apparatus. As one examiner pointed out, there's issues with mixing claim types.

[smgsmc]

Hi.  I'd like to follow up on this multi-faceted topic.  I glanced over IPXL vs Amazon, and want to re-read it more carefully.  In the meanwhile, here are two aspects I'd like to follow up on.

(A) As Karen pointed out, mechanical apparatus claims frequently include claims such as:

(1) An apparatus comprising:
     a base;
     an arm rotatably connected to the base; ...
   
"Rotatably" means "capable of being rotated".  The point of using "rotatably" is that you want the apparatus at rest (that is, the arm is not actively rotating) to be infringed.  Also, in the independent claim, you don't want to limit yourself to a particular joint (ball-and-socket, pivot, gimbal, rubber hose ...); those will be claimed in dependent claims.  Why is this functional language apparently well-accepted, but analogous systems claims such an object of contention?


(B) I recently inherited an Office Action from someone else.  It had a claim of the form (mixing some of the previous examples):

(1)  A transmitter comprising:
    a baseband processor;
    an encoder;
    a RF filter; and
    a 100 MHz sine wave generator.

No functional language at all.  Guess what?  It got a 112, second paragraph, rejection for indefiniteness.  It merely claimed "a laundry list" of elements without specifying relationships between the elements.  So how is this rejection to be addressed without amending the claim to read:

(1) A transmitter comprising:
   a baseband processor configured to ...;
   an encoder configured to ...;
   a RF filter configured to ...; and
   a 100 MHz sine wave generator configured to ....

No one really cares about the physical connections (solder joints, wires, cables, printed circuit board traces, ...) tying the elements together.  What ties the elements together is how they process inputs/outputs.  Also, in systems claims of this sort, the internal physical structures of the elements are often not novel.  One typically does not want to (or need to) recite the guts of a CPU or memory chip.

[Isaac]

(1)  A transmitter comprising:
    a baseband processor;
    an encoder;
    a RF filter; and
    a 100 MHz sine wave generator.

No functional language at all.  Guess what?  It got a 112, second paragraph, rejection for indefiniteness.  It merely claimed "a laundry list" of elements without specifying relationships between the elements.  So how is this rejection to be addressed without amending the claim to read:

(1) A transmitter comprising:
   a baseband processor configured to ...;
   an encoder configured to ...;
   a RF filter configured to ...; and
   a 100 MHz sine wave generator configured to ....

The latter claim could have the same issue as the original claim unless the "configured to" clauses include some relationship between the components.   Reciting  "a base band configured to blah blah blah the output from the baseband processor would at least not have the laundry list issue.

[JimIvey]

No one really cares about the physical connections (solder joints, wires, cables, printed circuit board traces, ...) tying the elements together.  What ties the elements together is how they process inputs/outputs.  Also, in systems claims of this sort, the internal physical structures of the elements are often not novel.  One typically does not want to (or need to) recite the guts of a CPU or memory chip.

You'll want some sort of functional connection, most likely.

To elaborate a bit on Isaac's comment, consider whether I've infringed your claim:  I take a transmitter, I open the chassis and toss in (losely) a baseband processor, an encoder, an RF filter, and a 100-MHz sine-wave generator, then I close the chassis.  Do I infringe?  There's a fairly strong argument that I do infringe.

I'm coming a bit late to this topic, but I'd like to add that there's nothing wrong with functional language in an apparatus/machine claim.

Here's an example of mixing claim types impermissibly:

(1)  A transmitter comprising:
    a baseband processor;
    an encoder;
    a RF filter;
    a 100 MHz sine wave generator; and
    transmitting a 100 MHz sine wave.

How can a transmitter include an action?

Compare the following:

(1)  A transmitter comprising:
    a baseband processor;
    an encoder;
    a RF filter; and
    a 100 MHz sine wave generator that is configured to generate a 100 MHz sine wave.

Is there any real doubt what it means that the generator can generate a 100 MHz sine wave?  I don't believe there is.  An examiner might assert that there is real doubt, but I usually have no trouble convincing the examiner otherwise.

And, as Isaac noted, the "configured to" portions need to tie the components together such that tossing disconnected parts into the chassis won't infringe.

Regards.

[smgsmc]

I'm coming a bit late to this topic, but I'd like to add that there's nothing wrong with functional language in an apparatus/machine claim.

That's been the subject of debate of a good chunk of this thread.  It appears that some people believe that

"a piece of hardware configured to perform an action" is an impermissible claim.  However, as just discussed, this language is often needed in a systems claim to avoid the 112 second paragraph rejection.  The various systems elements are tied together by functional, not physical, relationships.

[JimIvey]

It appears that some people believe that "a piece of hardware configured to perform an action" is an impermissible claim.

I'll weigh in with respect to this debate.  There's nothing wrong with that.  I've successfully used language such as "a latch mechanism that, when in a latched position, resists movement of" some other element in a specifically recited way.  Of course, with computer and digital logic claims, it's quite common to recite something like "a logic module configured to" perform some recited function.  In the spec, "logic" is often defined as something like digital logic circuitry and/or computer instructions ... .

In fact, to save myself editing time, my computer system claim is something like:

20.   A computer system comprising:
a processor;
a memory operatively coupled to the processor; and
a [give it a name] module (i) which executes in the processor from the memory and (ii) which, when executed by the processor, causes the computer to [general preamble stuff] by:   
[paste method steps here]

So, I have copied and pasted method steps right there in the computer system (machine) claim.  No problems.

Regards.