holding that the term “transparent” was definite because the disclosure, which showed that a substantial amount of infrared radiation was always transmitted even though the precise degree of transparency varied depending on certain factors, was sufficiently clear
How later courts described this case
- holding that the term “transparent” was definite because the disclosure, which showed that a substantial amount of infrared radiation was always transmitted even though the precise degree of transparency varied depending on certain factors, was sufficiently clear
- ruling that “there is' nothing intrinsically wrong with the use of such a technique in drafting patent claims”
- holding that a functional limitation covers all embodiments performing the recited function
- “[T]here is nothing intrinsically wrong with [defining something by what it does rather than what it is] in drafting patent claims.”
Written by the judges who cited it.
Later courts went against this
Disagreed with by In Re Hauserman, Inc, 892 F.2d 1049 (1989)
" We disagree with this contention and with the Commissioner's reliance on In re Swinehart, 439 F.2d 210, 169 USPQ 229 (CCPA 1971).
The opinion
LANE, Judge
(concurring).
I concur in the result reached by the principal opinion. While I do not necessarily disagree with the conclusions about functionality stated therein, I find it unnecessary in this case to make such conclusions.
Taking the language of the third paragraph of section 112 as a definition of the type of “functional” expressions which have long been troublesome in patent law, I find that such expressions are those which recite “a means or step for performing a specified function without the recital of structure, material, or acts in support thereof.” An example of what is meant by “a specified function” is found in the Supreme Court’s opinion in General Electric Co. v. Wabash Appliance Corp., 304 U.S. 364 , 58 S.Ct. 899 , 82 L.Ed.2d 1402 (1938). In that case, offsetting and sagging of filaments in incandescent lamps had long been a problem in the art. The specification there described how to remedy those problems by regulating the size and shape of the grains of material making up the filaments. The claims contained the following expression, which was relied upon for novelty: “grains of such size and contour *215 as to prevent substantial sagging and off-setting during a normal or commercially useful life for such a lamp.” Id. at 368, 58 S.Ct. at 901 . The court stated:
A limited use of terms of effect or result, which accurately define the essential qualities of a product to one skilled in the art, may in some instances be permissible and even desirable, but a characteristic essential to novelty may not be distinguished from the old art solely by its tendency to remedy the problems in the art met by the patent.
Id. at 371 , 58 S.Ct. at 903 . The court thus held, under the patent law then in effect, that certain kinds of functional expressions were impermissible at the point of novelty, specifically, those wherein the recited function is merely the solution of a problem in the art.
It cannot be the law that all functional terms are condemned when used to distinguish a claimed invention from the prior art. If this is the law, and it is carried to its logical conclusion, many nouns and adjectives would be condemned as functional, since they define in terms of use or effect. For example, a “door” is something used to close and open a passageway; a “nail” is an object used to hold two pieces of material together; a “black” material is one incapable of reflecting visible light. It is apparent to me that if functionality at the point of novelty is ever per se a ground for rejecting claims, it is not always so.
The kind of function recited in the product claim before us — transparent to infrared rays — is a physical characteristic of the composition of matter claimed. Moreover, no one has suggested a more distinct way of defining that composition, although it has been argued that the degree of transparency might be more precisely defined. I conclude that the recitation here is not the kind of claim functionality condemned by earlier cases but that it is a kind which is pér-mftted.
It is true that all expressions in claims, functional or otherwise, must be definite in order to satisfy the second paragraph of 35 U.S.C. § 112 . I am in agreement with the principal opinion that the expression here in issue is reasonably definite.