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. \u00a0So, with the second edition of the book being released recently, I thought it would be a good time to re-stock my bookshelf.<\/p>\n
The second edition includes the timely addition of a chapter on functional claiming. \u00a0The chapter starts out with a quote from Judge Rich that: \u00a0“[f]ew words in patent law have acquired more diverse meanings than the word “functional.” \u00a0I was curious about the source of that quote and thought \u00a0it might be of interest to reproduce here in greater context:<\/p>\n
9. \u00a0One 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 \u00a7\u00a7 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:<\/p>\n
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 \u00a7 168 (as supplemented to 1962).<\/p>\n
10. \u00a0This statement, if correct, would lead appellant into somewhat of an impasse \u2014 statements indicating what an entity is “supposed to do”\u00a0as well as <\/em>statements indicating what that entity “does” may\u00a0both <\/em>be “functional.”<\/p><\/blockquote>\n
In re Fuetterer<\/span>, 319 F.2d 259, 266 (C.C.P.A. 1963)(footnotes 9 and 10).<\/p>\n","protected":false},"excerpt":{"rendered":"
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. \u00a0So, with the second edition of the book being released recently, I thought it would be a good time to re-stock […]<\/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\/6417"}],"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=6417"}],"version-history":[{"count":3,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/6417\/revisions"}],"predecessor-version":[{"id":6420,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/6417\/revisions\/6420"}],"wp:attachment":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=6417"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=6417"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=6417"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}