2100 Patentability

Broadest reasonable interpretation of "adapted to"

As explained by MPEP 2111.04, the phrase "adapted to" is sometimes interpreted as the narrower "configured to" and other times as the broader "capable of." The MPEP directs "[t]he determination of whether each of these clauses is a limitation in a claim depends on the specific facts of the case," and cites In re Giannelli to show that the court determined the scope of "adapted to" by analyzing the written description. In re Giannelli cites Aspex eyewear in construing this phrase.

 

But examiners should not be construing claims as courts do. As put by MPEP 2173.02(I), "The Office does not interpret claims when examining patent applications in the same manner as the courts." This section goes on to explain that examiners avoid construing claims so that we do not interpret claims more narrowly than a court might.

 

I think 2111.04 would benefit from the guidance that MPEP 2111.03 provides for another phrase that requires the court to review the specification, "For the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, “consisting essentially of” will be construed as equivalent to “comprising.”"

 

Providing matching guidance that "adapted to" should be interpreted as "capable of" provides clarity on the broadest reasonable interpretation. MPEP 2173.02 quotes the Federal Circuit for "We note that the patent drafter is in the best position to resolve the ambiguity in the patent claims, and it is highly desirable that patent examiners demand that applicants do so in appropriate circumstances so that the patent can be amended during prosecution rather than attempting to resolve the ambiguity in litigation."

Tags

Voting

0 votes
2 up votes
2 down votes
Idea No. 209