It’s hard to believe, but examiners sometimes bootstrap improper rejections with circular logic. Sometimes this is intentional, and sometimes it based on a misunderstanding of the law. In any event, one area we have covered previously relates to “capable of” language (here). But whenever one discusses such topics in patent law, one must be careful and precise. Concepts related to “capable of” language come up in different contexts that have nothing to do with one another - until an examiner conflates them and uses them as a basis for a rejection.

The example today is where a claim recites a certain structural feature. Sometimes an examiner will reject the claim based on prior art missing that feature, along with the assertion that the prior art is “capable of” the missing feature. This rejection is improper on its face - when the prior art is missing a structural feature, merely asserting the prior art is capable of including that structural feature, without more is not enough.

However, some examiners are convinced this form of a rejection is proper because they find language in the MPEP that seems to support the idea. What they confuse is that the MPEP language they cite is for a totally different proposition. In particular, some examiners attempt to support the above approach by citing MPEP 2114. However, Section 2114 of the MPEP addresses the situation where the claim recites a functional limitation - not one where the missing limitation is a structural one.

In other words, it is true that when the claim recites functional language, prior art structure capable of performing the missing functional aspect is nonetheless sufficient in some cases. But the reverse is not true - a claim reciting structural features is not properly rejected by prior art merely capable of having the missing structural feature added to it. While logic dictates this result, it often requires an appeal to convince some examiners.

For example, MPEP 2114 explains that there is nothing wrong with functional limitations, but if an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima facie case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus.

So, do not let examiners double talk you into believing that it is proper to cite rules related to functional claim language when arguing about a missing structural feature.