Claim Term “Adapted to” Means “Configured to” — Not Just “Capable of” - In re Giannelli

by McDermott Will & Emery

The U. S. Court of Appeals for the Federal Circuit reversed an obviousness rejection by the U.S. Patent and Trademark Office (PTO) Patent Trial and Appeal Board’s (the Board) of application claims directed to a row pulling exercise machine where the prior art reference was directed to a bench press pushing exercise machine.  In re Giannelli, Case No. 13-1167 (Fed. Cir., Jan.13, 2014) (Lourie, J.).

The abstract of the application explained that the invention was directed to a rowing exercise machine that “includes an input assembly which enables a user to maintain biomechanical alignment of the user’s wrist and forearm during performance of the exercise, while maintaining a consistent torque applied to the shoulder joint.”  The abstract further explained that the input assembly “defines a declining, substantially linear path, where the user’s forearms remain substantially parallel to the ground as the input assembly is draw back.”  The original claims of the application recited an input assembly mechanism that was “adapted to” be moved from a first to a second position.

During prosecution, the examiner rejected the application claims as anticipated by a prior art patent directed to a chest press exercise machine whose input assembly “travel[s] along a . . . path which simulates . . . [an] outward pushing motion.”  In response to the rejection, the patentee amended the application claims to recite that the input assembly mechanism was “adapted to” be moved from a first to a second position “by a pulling force exerted by a user . . . in a rowing motion.”

The examiner issued a final rejection of the claims under 35 U.S.C. §102(b) and §103(a) based on the same prior art.  On appeal, the Board affirmed, broadly construing the “adapted to” language of the application claims to mean “capable of.”  In other words, the Board characterized the dispositive issue as whether the prior art chest press machine was “capable of” being used by exerting a pulling force on the handles and affirmed the obviousness rejection.  The Board did not address the anticipation rejection.  The applicants appealed.

The Federal Circuit reversed, explaining that the written description of the application described the physical location of the pulling handles relative to other machine components as “structural attributes that enable[d] performance of the rowing motion.”  The Court explained that the proper dispositive issue was whether the prior art chest press machine was “made to,” “designed to” or “configured to” allow the user to perform a rowing exercise.  The Court answered that question in the negative, stating emphatically that “[p]hysical capability alone does not render obvious that which is contraindicated,” that “[a] chest machine is not a rowing machine” and that “a sure-fire way to cause injury is to use a machine in a manner not intended by the manufacturer.”

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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