Examiners often reference the decision of In re Schreiber, 1218 F.3d 1473 (Fed. Cir. 1997) for the proposition that “claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function” because it is described this way in MPEP §2114(I). However, it appears that the Schreiber court itself never made such a statement. Rather, the court found that because the claimed invention had the same structural shape as the cited prior art, the examiner was correct in finding a prima facie case of anticipation. Because of this, the court stated that “[a]t that point, the burden shifted to Schreiber to show that the prior art structure did not inherently possess the functionally defined limitations of his claimed apparatus” (Schreiber, 1218 F.3d at 1478). Because it was found that Schreiber did not meet this burden, the court affirmed the decision of the Board of Appeal.
The MPEP phrase discussed above, in my opinion, is inaccurate or, at the very least, incomplete, as it seems to suggest that an apparatus claim cannot be distinguished from the prior art using a functional limitation. Since examiners appear to consult the MPEP regularly, but not the decisions referenced therein, this leads to some misinterpretations of the law and, consequently, to some improper rejections. I recommend either removing this phrase or replacing it with one that more accurately reflects the actual Schreiber decision.
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