It’s hard to believe, but examiners sometimes bootstrap improper rejection 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 one must be careful and precise, as concepts related to this language come up in different contexts that have nothing to do with one another – until an examine conflates them and uses them as a basis for a rejection.

The example today is where a claim recites a certain structural feature, and the examiner rejects 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. 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, the cited area of the MPEP (2114) confirms is for the situation where the claim recites a functional limitation – not one where the missing limitation is a structural one.

In other words, some examiners try to use the notion that when the claim recites functional language, prior art structure capable of performing the missing functional aspect is nonetheless sufficient. But the opposite 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.