Judge Rich on Functional Language

I made the mistake a few years ago of loaning my copy of “Invention Analysis and Claiming” by Ron Slusky to a colleague — who promptly moved away . . . with my book.  So, with the second edition of the book being released recently, I thought it would be a good time to re-stock my bookshelf.

The second edition includes the timely addition of a chapter on functional claiming.  The chapter starts out with a quote from Judge Rich that:  “[f]ew words in patent law have acquired more diverse meanings than the word “functional.”  I was curious about the source of that quote and thought  it might be of interest to reproduce here in greater context:

9.  One of the primary problems we have in coming to grips with the instant rejection is in what sense the word “functional” is being used. Few words in patent law have acquired more diverse meanings than the word “functional.” Ellis, for example, in his “Patent Claims” (1949) at §§ 255-276 discusses at least five. It is for this reason that bandying about and lifting out of context statements referring to “functional” expressions, has, as Ellis euphemistically puts it, “caused confusion.” In addition to Ellis, supra, some of the more recent texts which outline the confusion that exists in the case law with regard to what are “functional” statements, and how they should be treated, are:

Glascock and Stringham, Patent Law, pp. 315-324 (1943) Hoar, Patent Tactics and Law, pp. 116-118 (3rd ed., 1950) Stringham, Patent Claim Drafting, pp. 215-243 (1952) Deller’s Walker on Patents, particularly at § 168 (as supplemented to 1962).

10.  This statement, if correct, would lead appellant into somewhat of an impasse — statements indicating what an entity is “supposed to do” as well as statements indicating what that entity “does” may both be “functional.”

In re Fuetterer, 319 F.2d 259, 266 (C.C.P.A. 1963)(footnotes 9 and 10).

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