We have discussed issues surrounding terms such as “configured to” or “adapated to” here (for example). But it should be appreciated that there is a different scope, or breadth, to these different terms. In considering a recitation in a claim that a structure is “configured to” perform a particular function, some case law equates that to “made to” or “designed to” perform that function, where the description makes clear that the recited structure is “designed to” or “constructed to” perform the recited function. In such cases, in order for prior art to be effective against claims that define a structure “configured to” perform a function, the prior art must show a purposeful structural design performing the recited function that is beyond mere capability. In re Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014); see also Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012) (noting that claim language “configured to” is construed more narrowly than “capable of” and holding that where claim language including the phrase “adapted to” is to be construed consistent with “configured to” language it requires that the structure must be “designed or configured to accomplish the specified objective, not simply that [it] can be made to serve that purpose.”).
What about “formed to”? Applicant Hoerbiger (SN14/482,532) attempted to rely on such language for a sealing plate with reinforcing fibers. Claim 16 on appeal is listed below:
16. A sealing plate made of plastic containing reinforcing fibers, said sealing plate comprising a disc-shaped member having a plurality of concentric, circumferentially-spaced openings that divide the disc-shaped member into a plurality of radially-spaced rings and a plurality of radially-extending webs, the webs dividing the rings into a plurality of ring sections, wherein the sealing plate has a sealing side which is formed to cooperate with a valve plate, and wherein a respective weld line extends obliquely to a circumferential tangent of each respective ring section, each weld line being penetrated by reinforcing fibers.
The applicant argued that the Examiner had not established that the sealing/synchronizing plate of the prior art (Speigel) was “formed to cooperate with a valve plate” as recited, but the Board was unconvinced.
Notably, it is well established that when there is a reason to conclude that the structure of the prior art is capable of performing the claimed function, the burden shifts to the applicant to show that the claimed function patentably distinguishes the claimed structure from the prior art structure. See, e.g., In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Appellant’s contention that the Examiner’s position is improper because no structural relationship of the plate 7 with a sealing plate is taught in Spiegl appears misdirected, since the Examiner’s position was premised on the plate of Spiegl being capable of cooperation with a valve plate (Ans. 3–4). Appellant has not provided any persuasive reasoning or credible evidence to refute the Examiner’s determination that Spiegl’s plate 7 as denominated by the Examiner would have been capable of cooperating with a valve plate (see generally Ans.). Attorney’s arguments in a brief cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
So, we see that “formed to” falls in the “capable of” category and thus it is easier to affirm the rejection, particularly with the burden shifted to the applicant.