{"id":5713,"date":"2012-11-18T21:11:53","date_gmt":"2012-11-19T03:11:53","guid":{"rendered":"http:\/\/www.717madisonplace.com\/?p=5713"},"modified":"2012-11-18T21:11:53","modified_gmt":"2012-11-19T03:11:53","slug":"adapted-in-its-operative-position-to-_____","status":"publish","type":"post","link":"https:\/\/www.717madisonplace.com\/?p=5713","title":{"rendered":"“adapted, in its operative position, to _____”"},"content":{"rendered":"

In reading Judge Moore’s dissent in Norgren v. ITC<\/span>, __ F.3d __ (Fed. Cir. 2012) that issued the other day, her comment about the functional language in the claim at issue caught my eye. \u00a0The claim at issue read:<\/p>\n

<\/p>\n

\n

1. Connecting structure for contiguously connecting<\/span><\/p>\n

together a pair of fluid-flow elements, each<\/span><\/p>\n

fluid flow element including a generally rectangular<\/span><\/p>\n

ported flange so as to define a pair of ported<\/span><\/p>\n

flanges associated with the fluid-flow elements,<\/span><\/p>\n

said connecting structure comprising:<\/span><\/p>\n

<\/span><\/p>\n

a four-sided, generally rectangular clamp adapted,<\/span><\/p>\n

in its operative clamping position, to engage, in<\/span><\/p>\n

parallel relationship with one another, the pair of<\/span><\/p>\n

ported flanges, one of said sides of the clamp being<\/span><\/p>\n

pivotally mounted so that said one side can be<\/span><\/p>\n

pivoted out of said operative clamping position in<\/span><\/p>\n

order to permit reception of said flanges into the<\/span><\/p>\n

clamp and then pivoted back into said operative<\/span><\/p>\n

clamping position,<\/span><\/p>\n

<\/span><\/p>\n

sealing means for establishing fluid-tight communication<\/span><\/p>\n

between the respective ports formed in<\/span><\/p>\n

said flanges, and<\/span><\/p>\n

<\/span><\/p>\n

locking means for releasably locking said one side<\/span><\/p>\n

in said operative clamping position, in which position<\/span><\/p>\n

the clamp urges th<\/span>e flanges towards one another<\/p>\n

thereby establishing together with said<\/span><\/p>\n

sealing means, said fluid-tight communication between<\/span><\/p>\n

said ports.<\/span><\/p>\n

\n<\/blockquote>\n

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:<\/span><\/p>\n

\n

We must look to the precise claim language and be<\/p>\n

ever vigilant not to strip away patent rights by eliminating<\/p>\n

claim limitations. This claim requires the clamp to be<\/p>\n

both \u201cgenerally rectangular\u201d and \u201cfour-sided\u201d in structure.<\/p>\n

Hence, while something with six sides (like the SMC<\/p>\n

ported flange pictured above) might be generally rectangular,<\/p>\n

that does not mean it is \u201cfour-sided.\u201d The claim<\/p>\n

does not require that the flange be four-sided, but it does<\/p>\n

require that the clamp be \u201cfour-sided.\u201d The claim also<\/p>\n

recites the functional limitation that the clamp must be<\/p>\n

\u201cadapted, in its operative clamping position, to engage<\/p>\n

. . . the pair of ported flanges.\u201d<\/p>\n

Hence the claims require that the clamp is: (1) foursided;<\/p>\n

(2) generally rectangular; and (3) adapted in its<\/p>\n

operative position to engage the flanges. These are three<\/strong><\/p>\n

distinct requirements, three distinct claim limitations.<\/strong><\/p>\n

The ALJ clearly understood this. The majority, however,<\/p>\n

improperly combines the structural and functional claim<\/p>\n

limitations to conclude that only the operative portion of<\/p>\n

the clamp must be four-sided and generally rectangular.<\/p>\n

(Emphasis added).<\/p><\/blockquote>\n

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.<\/p>\n

<\/p>\n","protected":false},"excerpt":{"rendered":"

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. \u00a0The claim at issue read: 1. Connecting structure for contiguously connecting together a pair of fluid-flow elements, each fluid flow element […]<\/p>\n","protected":false},"author":1,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[1],"tags":[],"_links":{"self":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/5713"}],"collection":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/users\/1"}],"replies":[{"embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=5713"}],"version-history":[{"count":3,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/5713\/revisions"}],"predecessor-version":[{"id":5716,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/5713\/revisions\/5716"}],"wp:attachment":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=5713"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=5713"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=5713"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}