In reading Judge Moore’s dissent in Norgren v. ITC, __ F.3d __ (Fed. Cir. 2012) that issued the other day, her comment about the functional language in the claim at issue caught my eye. The claim at issue read:
1. Connecting structure for contiguously connecting
together a pair of fluid-flow elements, each
fluid flow element including a generally rectangular
ported flange so as to define a pair of ported
flanges associated with the fluid-flow elements,
said connecting structure comprising:
a four-sided, generally rectangular clamp adapted,
in its operative clamping position, to engage, in
parallel relationship with one another, the pair of
ported flanges, one of said sides of the clamp being
pivotally mounted so that said one side can be
pivoted out of said operative clamping position in
order to permit reception of said flanges into the
clamp and then pivoted back into said operative
clamping position,
sealing means for establishing fluid-tight communication
between the respective ports formed in
said flanges, and
locking means for releasably locking said one side
in said operative clamping position, in which position
the clamp urges the flanges towards one another
thereby establishing together with said
sealing means, said fluid-tight communication between
said ports.
In discussing the functional language, Judge Moore comments that the functional language is a requirement of the claim that must be treated as a claim limitation:
We must look to the precise claim language and be
ever vigilant not to strip away patent rights by eliminating
claim limitations. This claim requires the clamp to be
both “generally rectangular” and “four-sided” in structure.
Hence, while something with six sides (like the SMC
ported flange pictured above) might be generally rectangular,
that does not mean it is “four-sided.” The claim
does not require that the flange be four-sided, but it does
require that the clamp be “four-sided.” The claim also
recites the functional limitation that the clamp must be
“adapted, in its operative clamping position, to engage
. . . the pair of ported flanges.”
Hence the claims require that the clamp is: (1) foursided;
(2) generally rectangular; and (3) adapted in its
operative position to engage the flanges. These are three
distinct requirements, three distinct claim limitations.
The ALJ clearly understood this. The majority, however,
improperly combines the structural and functional claim
limitations to conclude that only the operative portion of
the clamp must be four-sided and generally rectangular.
(Emphasis added).
In view of Judge Moore’s remarks, look for more uniform examination within the PTO of claims that include “adapted to” and other functional language — or not.