“adapted, in its operative position, to _____”

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.

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