Patent Claim Construction – Words and Phrases – “Adapted to”
Words and phrases used in patent claims are supposed to have an accepted, predictable meaning unless the inventor provides some special meaning. Occasionally a patent examiner will try to import a much broader meaning so that he or she can apply a reference patent that may actually be a bit too distant from the invention’s subject matter. Having some rules for predictable interpretation of claim terms would be quite helpful.
One example is the phrase “adapted to” (or sometimes “adapted for”).
In re Gianelli [109 USPQ2d 1333 (Fed. Cir. 01-13-2014)] is a decision that overturned a ruling of the Patent Trial and Appeal Board. Here the Federal Circuit Court provides some guidance about how the term “adapted to” should be interpreted in a patent claim.
This term frequently appears in a claim when specific language or nomenclature does not exist about how parts are connected to one another, or might make the claim too specific or too narrow.
In Gianelli, the court instructs that “adapted to” (or adapted for) has a meaning that the apparatus or element is especially designed or constructed to be used or operated in a certain way, so long as this meaning would be clear from the written description. This means that “adapted to” should not be read so broadly as to mean simply “capable of” when the written description is more specific than that.
Gianelli’s invention was an exercise machine used for achieving a pulling or rowing motion, whereas the reference cited by the examiner concerned an exercise machine for a pushing or pressing action, and the Federal Circuit saw fit to take judicial notice that “anyone who has used exercise machines knows that a sure-fire way to cause injury is to use a machine in a manner not intended by the manufacturer (p. 1337). So a machine cannot simply be adapted to perform a function, if that is an absurd or contrary function, unless such a use or adaptation appears somewhere in the inventor’s written description, or in literature about the machine.
It now seems to be the case, post-Gianelli, that the use of “adapted to” or “adapted for” is a compact and effective way of expressing a claim limitation to cover a disclosed intention and its equivalents, so long as that is fully supported in the description. A reference that does not teach how some other apparatus can be adapted, in some logical way and not causing harm or danger, should not be the basis for rejecting the patent claim.
Hopefully, the Federal Circuit will gradually develop the case law on other terminology so that patent claim terms and phrases will have better predictable meaning.