Some Recent Functional Language Decisions

It is worth highlighting that in the recent opinion of Medtronic v. Boston Scientific Corp. et al., App. No. 2011-1313 (Fed. Cir. Sept. 18, 2012) the Federal Circuit noted the limiting effect of functional language in a claim.  The technology of the patents in the appeal concerned implantable defibrillators.  The district court had construed the claims at issue in the case (from Reissue patent RE38,119) as being limited to:  “for the treatment of congestive heart failure.”   That limitation was not expressly part of the claim language.  Upon appeal of that claim construction, the Federal Circuit noted that claim 171 of a continuation patent of the RE38,119 patent, the RE39,897 patent, expressly recited “to improve the pumping ability of the heart suffering from heart failure.”  Claim 171 recites:

171.  A method of improving the pumping ability of a heart suffering from heart failure comprising:

sensing for depolarization signals only from one ventricle of the heart;

stimulating the left ventricle and the right ventricle when a depolarization signal from the one ventricle is detected for effecting a coordinate contraction of ventricles contracting in an incoordinate manner to improve the pumping ability of the heart suffering from heart failure.

The Federal Circuit stated:

Moreover, inclusion of the express limitation “to improve the pumping ability of the heart suffering from heart failure,” RE’897 Patent col. 21 ll. 33-35, in claim 171 of the RE’897 Patent, a continuation of the RE’119 Patent, suggests that the other claims that do not recite such a limitation should not be so limited. We therefore conclude that the district court erred by restricting the claimed invention to the treatment of congestive heart failure.

Thus, the Federal Circuit noted that the functional language “to improve the pumping ability of the heart suffering from heart failure” has limiting effect on the scope of the claim.

Ex Parte Miles

Another functional language decision, Ex Parte Miles, was previously highlighted by the All Things Pros blog.  In that appeal to the Board, the Board gave limiting effect to the language “adapted to be removably secured to said base.”  The claim at issue recited:

2. A gas fireplace insert assembly, comprising:

a firebox having a base a top and at least one wall, said at least one wall extending between said top and said base such that said base, said top and said at least one wall define a front opening firebox;

legs adapted to be removably secured to said base;

said at least one wall has a rear portion and side portions having a dark color and a contrasting light color, said light color extending downward from a demarcation between said dark and said light colors to said base; and

said demarcation being continuous across said rear and

said side portions.

The Examiner had argued that “adapted to be removably secured to said base” was not a positive limitation but only required the ability to perform.  Moreover, the Examiner argued that the legs of a cited reference were capable of being removed because they were “removable by a blowtorch.”  The Board reversed the Examiner noting Federal Circuit precedent that claim construction should be firmly anchored in reality:

Under the Examiner’s interpretation, because it is possible to remove anything using a blow torch, every means of attaching or securing two parts is removable. This interpretation is incorrect because it would effectively expunge the word “removably” from the claim language. See Stumbo v.Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing claim constructions that render phrases in claims superfluous).

The Specification does not provide a definition for the terms “removably secured” or “removably attached.” An ordinary meaning of removable is “that can be removed or taken away,” and an ordinary meaning of “secure” is “to fix or attach (something) so as not to become loose, giveway, fall off, or come apart.”1 Consistent with these ordinary meanings, the Specification describes removable legs as attached by screws.2 Spec. 13, ll. 17-25 (describing legs 100 and 102 as releasably secured to base rim 20 ofinsert 12 by screws 116); figs. 6-8.

An artisan would interpret that removably secured or attached legs are those that they may be removed in the ordinary sense of the word, such as by unscrewing a screw. See K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1365 (Fed. Cir. 1999) (interpreting that rivets and laminate permanently affix while, in contrast, screws are removable). Consequently, removal by means such as a blow torch is not within the scope of claims 2, 10, and 16. Id. at 1365 (“claim construction is firmly anchored in reality by the understanding of those of ordinary skill in the art”).

As such, we cannot sustain the rejection of independent claims 2, 10, and 16, and their respective dependent claims 3-9, 11-13, and 17-29.

Having determined that the Examiner’s proposed combination of references did not satisfy the language “legs adapted to be removably secured to said base,” the Board reversed the rejection.

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