United States: Prior Art Machine Merely Capable Of Performing Claimed Functionality Insufficient To Render Claims Obvious Where Narrow Definition Of "Adapted To" Was Used

In In re Giannelli, No. 13-1167 (Fed. Cir. Jan. 13, 2014), the Federal Circuit reversed the Board's affirmation of the examiner's rejection of claims 1-25 of U.S. Patent Application No. 10/378,261 ("the '261 application"), holding that the claims of the '261 application were not obvious in light of U.S. Patent No. 5,997,447 ("the '447 patent").

Raymond Giannelli filed the '261 application for "an exercise machine on which a user can perform a rowing motion against a selected resistance, thereby strengthening the back muscles."  Slip op. at 2. The patent examiner initially rejected the claims as anticipated by the '447 patent, which describes a chest-press exercise machine where the user performs the exercise by pushing on the handles to overcome the selected resistance.  In response, Giannelli amended the claims to add the limitation "by a pulling force exerted by a user on the first handle portion in a rowing motion."  Id. at 4.  Despite this amendment, the examiner rejected the claims as anticipated by and obvious over the '447 patent.  Giannelli appealed to the Board.

The Board did not address the anticipation rejection, but affirmed the obviousness rejection.  Finding it reasonable for a user to face the handles of the prior art chest-press machine and exert a pulling force on its handles in a rowing motion, the Board concluded that the '261 application simply recited a new intended use of rowing for the prior art apparatus.  The Board noted that merely reciting a new intended use for an old product did not make a claim to that old product patentable.  Because Giannelli had not shown that the prior art chest-press machine could not be used as a rowing machine, the Board found that Giannelli failed to rebut a showing of obviousness.  Accordingly, the Board affirmed the examiner's rejection, and Giannelli appealed.

On appeal, the Federal Circuit reversed the rejection, holding that the Board erred in concluding that the claims of the '261 application would have been obvious over the '447 patent.  The Court reasoned that the Board did not carry its burden of establishing a prima facie case of obviousness.  The Court first looked at the '261 application's claim language, which recited a "first handle portion adapted to be moved from a first position to a second position by a pulling force . . . in a rowing motion," and noted that the written description specifically limited "adapted to" to mean "that the claimed machine is designed or constructed to be used as a rowing machine whereby a pulling force is exerted on the handles."  Id. at 7 (citation omitted).  The Court stated that, as used in the '261 application, "adapted to" did not include "'capable of' or 'suitable for.'"  Id. (citation omitted).  The Court found that the relevant question before the Board was thus whether the prior art apparatus was made to, designed to, or configured to allow the user to perform a rowing exercise by pulling on the handles, as claimed in the '261 application.  According to the Court, there was no question that the prior art apparatus did not have handles that were adapted to be pulled in a rowing motion.  The Court stated, "In the context of the claimed rowing machine, . . . the mere capability of pulling the handles is not the inquiry that the Board should have made; it should have determined whether it would have been obvious to modify the prior art apparatus to arrive at the claimed rowing machine."  Id. at 8.  The Court thus held that the Board erred in concluding that the examiner had met his initial burden of establishing a prima facie case of obviousness.  "[B]ecause the initial burden was not met, Giannelli was not obligated to submit additional evidence to rebut the examiner's findings of pulling capability."  Id. at 9.  Accordingly, the Court reversed the Board's affirmation of the examiner's rejection of the claims of the '261 application.

Judges: Rader, Lourie (author), Moore

[Appealed from Board]

This article previously appeared in Last Month at the Federal Circuit, February 2014. To view the original article, please click here.

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