In a non-precedential decision addressing patentability of rejected claims of an application, the U.S. Court of Appeals for the Federal Circuit reversed a decision by the U.S. Patent and Trademark Office (PTO) Board of Patent Appeals and Interferences (Board) and remanded the case, finding that functional language recited in a preamble was limiting. In Re Jasinski, Case No. 12-1482 (Fed. Cir., Feb. 15, 2013) (Moore, J.)
This case arose from an appeal from the decision of the Board affirming the examiner’s rejection of all claims during prosecution of a U.S. patent application. The application was directed to a method and apparatus for verifying the accuracy of logical-to-physical mapping software—in particular, to a software tool for verifying memory-testing software. During prosecution, the examiner rejected the claims of the application as being anticipated by a single reference, a U.S. patent to Adams. The Board affirmed the examiner’s decision of unpatentability, concluding that a claim recitation “[to verify/verifying] the accuracy of [said] logical-to-physical mapping software” recited in the preamble and claim body is a statement of intended use and thus does not limit the claimed invention. The Board further stated that even if the functional claim language is limiting, Adams disclosed it. Jasinski appealed.
On appeal, Jasinski argued that the functional claim language recited in the preamble should be given patentable weight, and its recitation in a claim limitation is limiting because the functional claim language is directed to the essence of the invention. The PTO responded that the functional claim language is nothing more than a statement of intended purpose because it was not positively recited. The Federal Circuit agreed with Jasinski that the functional claim language is limiting because it referred to the essence of the invention and provided the criteria by which the recited limitation is analyzed. The Court further concluded that Adams did not disclose the functional claim language, i.e., a limitation relating to verifying the accuracy of logical-to-physical mapping software, because Adams’ technique did not include defective logical-to-physical mapping software and failed to explain how the technique would be performed. Thus, the Court reversed the Board’s decision and remanded the case for further proceedings.