Last year I blogged here about a number of Board decisions that reversed an Examiner for using this reasoning. And I recently ran across another one of these reversals, in Ex parte Stein. Stein involved claims to an "immunoassay analyzer" which recited "a computer controller which [functional limitations]". I think this language in the Board's decision discussing the relevant case law makes a good template for arguing against such rejections.
Although it is well established that claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function, see, e.g., In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997), in order to satisfy the functional limitations in an apparatus claim, however, the prior art apparatus as disclosed must be capable of performing the claimed function. Id. at 1478. As such, to be capable of performing the functional limitations in claim 1, the controller must possess the necessary structure, hardware or software, for example, the programming, to function as claimed.Note that the Board distinguishes In re Schreiber, which was purely mechanical, and which seems to be a favorite among Examiners. The Board relies instead upon more recent cases that involve electronics.
The Examiner’s analysis appears to be based upon a finding that Hanawa’s controller would have been capable of performing the claimed functions upon further modification, such as the installation of software (Ans. 17, 18). While it might be possible to install software and/or hardware that would allow Hanawa’s controller to perform the functions of controlling movement, tracking location and determining the path for each of a plurality of test vessels as required in claim 1 and 13, the “capable of” test requires that the prior art structure be capable of performing the function without further programming. Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3 1376, 1380 (Fed. Cir. 2011) (discussing Microprocessor Enhancement Corp. v. Texas Instruments, Inc. , 520 F.3d 1367 (Fed. Cir. 2008)). When the functional language is associated with programming or some other structure required to perform the function, that programming or structure must be present in order to meet the claim limitation. Id. While in some circumstances generic structural disclosures may be sufficient to meet the requirements of a “controller,” see Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1364 (Fed. Cir. 2012) (citing Telcordia Techs., Inc. v. Cisco Sys., Inc., 612 F.3d 1365, 1376–77 (Fed. Cir. 2010)), that is not the case here.