In In re Blue Buffalo Enterprises, Inc., No. 2024-1611 (Fed. Cir. Jan. 14, 2026), the Federal Circuit affirmed the PTAB's decision affirming the Examiner's obviousness rejection after rejecting Blue Buffalo's narrow construction of the claim term “configured for”.
Assigned to Blue Buffalo Enterprises Inc., the '152 application, filed December 29, 2020, relates to a wet pet food product. The product comprises a storage area having at least one deformable side allowing food to be pushed out and a bottom wall having a tool portion with projections for breaking up and/or tenderizing the food. The main appealed claim recites:
[a] packaged food product comprising:
a container including at least one sidewall and a bottom wall which combine to define a storage area, said bottom wall having an integrally formed, tool portion; and
a food product retained within the storage area and in contact with the at least one sidewall, wherein the at least one sidewall is configured to be readily deformable by a hand of a user to reduce a volume of the storage area, and the packaged food product is configured such that reducing the volume of the storage area causes the food product to exit the storage area for further processing with the tool portion, wherein the tool portion includes a plurality of spaced projections configured for use in breaking up and/or tenderizing the food product after the food product is removed from the storage area.
The Examiner, giving “configured to” its broadest reasonable interpretation, interpreted the term as an intended use of the spaced projections. Therefore, the Examiner considered prior art disclosure of a similar structure “capable of” performing this use as meeting this claim limitation. The cited Taylor reference discloses a food product retained within a storage area with at least one side wall and a bottom wall, while the cited Coleman reference discloses spaced projections on the bottom wall of a food product container. The Examiner combined these references, concluding that it would have been obvious to modify the product by Taylor in view of Coleman to arrive at a similar structure to the one in Blue Buffalo's claims and capable of “breaking up and/or tenderizing the food product after the food product is removed from the storage area”. Although neither Coleman nor Taylor discusses removing food from the storage area and using the projection to break up and/or tenderize the food, the Examiner asserted that “the prior art need only provide a reason for arriving at a similar structure,” since the claims are directed to a product, not to a method of using a product.
On appeal, Appellant argued that Coleman specifically taught a structure for retaining food or drink in a bowl until consumed, using the spaced projections designed to engage with the ground to resist sliding and overturning. Appellant further argued that there was no motivation to use Coleman's the same way as in the claims and that “configured to” was more than an intended use, requiring mere compatibility. The PTAB disagreed and affirmed the Examiner's rejection.
Blue Buffalo appealed to the Federal Circuit, relying on In re Giannelli, 739 F.3d 1375 (Fed. Cir. 2014) and Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335 (Fed. Cir. 2012) for the proposition that “configured to” should be construed as “specifically designed to”. In Aspex Eyewear, the Court ruled that the phrase “adapted to” had a narrow meaning, requiring that the claimed structure is “designed for” or “configured to” accomplish an intended use, “not simply that they can be made to serve that purpose”. See Aspex Eyewear, 672 F.3d at 1349. The Court also relied on the doctrine of claim differentiation, concluding that a different claim that recited “capable of” supported its construction of “adapted to”. Id. at 1349.
In Giannelli the Court ruled that the phrase “adapted to” had a narrower meaning. See Giannelli, F.3d at 1379. The claim at issue recites a rowing exercise machine with handles “adapted to” be pulled by a user. Id. at 1380. In finding the claims non-obvious in view of a prior art disclosure of a chest press machine with handles pushed by a user, the Court specifically emphasized that the mere physical capability of the prior art apparatus did not render the claim obvious. Id. at 1380. In fact, the Giannelli Court shifted the burden to USPTO, requiring the Examiner to establish a prima facie case of obviousness including an explanation of why or how it was obvious to modify a claimed structure to perform the intended use. Id. at 1380-81.
In Blue Buffalo, the Court distinguished Aspex Eyewear and Giannelli, finding no basis in the claims or written description that “configured to” should be construed to require more than a structure “capable of” removing the product from the storage area and using the projection to break up and/or tenderize the food. Based on this construction, the Court affirmed the Board, finding the claims obvious over Coleman.
The Court's decision provides a useful caution on the limits of “configured for”, “configured to”, and similar terms to impart structure to a product claim to distinguish from prior art products. Such terms, which have functional characteristics, present an inherent tension between the Applicant's desire to avoid potentially unknown prior art while preserving a broad construction in a later prosecution and/or litigation. If the Applicant is forced to rely on narrowing prosecution arguments to avoid prior art during prosecution, this can introduce ambiguity into the claim construction applied by a court in a later litigation. One way to try to avoid this outcome is to include several alternative embodiments in the specification that may be turned to for supporting prosecution amendments that narrow the claims just enough to avoid cited art while maximizing the potential for the broadest possible claim construction. Another option for encouraging a narrower construction is including a similar claim reciting “capable of” or similar language, allowing the Applicant or patentee to rely on the doctrine of claim differentiation to encourage a narrower construction of “configured to” to encourage a narrower interpretation, as in Aspex Eyewear.
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