Functional language is used by many applicants. See a previous post here discussing some of the issues around terms like “configured to” and ‘adapted to".
However, applicants should be aware that at least some PTAB judges consider that there is a difference in scope between such terms. Specifically, a recent case, discussed below, was decided solely on this basis.
The case (Appeal 2023-003258, Application 17/172,951) relates to a camera monitoring system. Claim 1 on appeal utilized “configured to” language. For example, the claim required “at least one controller configured to” carry out various processing operations..
On appeal, the applicant (Continental Automotive) argued that the examiner erred in the broadest reasonable interpretation by improperly considering the function language. Specifically, the applicant cited various case law (e.g., In re Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014)) to explain how the examiner’s interpretation was improper.
Apparently agreeing that the examiner would have erred if the claim had followed the terminology of the relevant case law, the PTAB nevertheless affirmed the rejection because the claims used different phrasing. That's right, the case turned on the fact that the claim used “configured to” rather than “adapted to”. While many might consider this a distinction without a difference, the PTAB seized on this in its quest to affirm. From the opinion (citations omitted):
Second, we find Appellant’s reliance upon two legal authorities, In re Giannelli and Aspex Eyewear, Inc. v. Marchan Eyewear, Inc. , is misplaced, because these cases are not directly on point with the facts and issues presented here. Appellant’s arguments regarding claim 1 are premised upon Appellant’s desired claim interpretation of “configured to” as “at least one controller (11, 104) configured to” perform the recited functions. Relying upon Giannelli, Appellant urges that the claim 1 language “configured to” should be construed more narrowly than “capable of.” In particular, Appellant urges that “applicable case law holds that 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.”
However, the phrase at issue in Giannelli is not “configured to,” but rather is “adapted to,” and analyzing what “adapted to” means. Contrary to Appellant’s arguments, Gianelli held that the term “adapted to” (as used in the ’261 application) has a narrower meaning than “capable of.” Furthermore, Giannelli held that “[b]ecause the Board’s analysis began with the premise that ‘adapted to’ meant ‘capable of,’” its consequences of doing so caused it to err. But here, the claim 1 phrase argued by Appellant is neither “adapted to” nor “capable of,” but is “configured to.” Therefore, we do not find Appellant’s arguments pertaining to Gianelli persuasive.
So, be aware that some PTAB judges can interpret “configured to” claim elements more broadly (and thus more easily rejected in view of prior art) than “adapted to” claim elements.