Rejection of Claim Reciting “Adapted to” Perform Function Requires More Than a Prior Art Having Mere “Capability” of Performing Function

Ken Salen | January 15, 2014

In re Giannelli

Decided January 13, 2014

Before RADER, LOURIE and MOORE, Opinion by LOURIE


Raymond Giannelli appealed the decision of the United States Patent and Trademark Office Patent Trial and Appeal Board (“Board”) affirming the rejection of all claims of U.S. Patent Application 10/378,261 (“’261 application”) under 35 U.S.C. §103(a) as obvious over U.S. Patent 5,997,447 ( “’447 patent”).

CAFC reversed, finding that the Board erred in concluding that the claims of the ’261 application would have been obvious in view of the ’447 patent.


Giannelli filed the ’261 application, entitled “Rowing Machine,” in March 2003. The ’261 application discloses an exercise machine on which a user can perform a rowing motion against a selected resistance, the motion characterized by a pulling motion.

Claim 1 is representative of the claims, which recite a functional language-based term:

1. A row exercise machine comprising an input assembly including

a first handle portion adapted to be moved from a first position to a second position by a pulling force exerted by a user on the first handle portion in a rowing motion,

the input assembly defining a substantially linear path for the first handle portion from the first position to the second position.

The Examiner rejected all the claims of the ’261 application as obvious over Giannelli’s own ’447 patent, directed to a chest press machine. Fig. 5 of the ‘447 patent is shown:


In affirming the Examiner’s obviousness rejections, the Board’s analysis began with the premise that “adapted to” merely means “capable of”.

The Board determined that that the limitation “a first handle portion adapted to be moved from a first position to a second position by a pulling force exerted by a user on the first handle portion in a rowing motion” simply recited the new intended use (rowing) for the ’447 patent chest press apparatus, and noted that the recitation of a new intended use for an old product did not make a claim to that old product patentable.”

The Board’s affirmance of the rejection contained no explanation why or how a person having ordinary skill in the art would modify the prior art chest press machine to arrive at the apparatus of the ’261 application.

Giannelli appealed.

The PTO bears the initial burden of showing a prima facie case of obviousness. In re Sullivan, 498 F.3d 1345, 1351 (Fed. Cir. 2007). When a prima facie case of obviousness is made, the burden shifts to the applicant to present evidence and/or argument supporting patentability. In re Glaug, 283 F.3d 1335, 1338 (Fed. Cir. 2002). The CAFC held that the PTO did not carry its burden in this case.

Because the Board determined that the machine claimed in the ’261 application would have been obvious merely by showing that a rowing exercise could be performed on the machine disclosed in the ’447 patent, and not whether it was obvious to modify the chest press machine to contain handles “adapted to” perform the rowing motion by pulling on them, the Board erred.

The claims at issue require a “first handle portion adapted to be moved… in a rowing motion”. The CAFC admitted that the phrase could be interpreted to mean ‘capable of’ or ‘suitable for’. However, the CAFC indicated that the written description will control how the phrase “adapted to” should be interpreted. In the present case, the written description made clear that “adapted to” has a narrower meaning, that the claimed machine is designed or constructed to be used as a rowing machine whereby a pulling force is exerted on the handles.

For example, the written description of the ’261 application describes how the position of the handles relative to the primary and secondary lever arms and the resistance mechanism renders them “adapted” to be moved by the user’s pulling force. For example, the application states that the exercise machine “enables a user to maintain biomechanical alignment of the user’s wrist and forearm during performance of the exercise, while maintaining a consistent resistance applied to the muscles, in the stability of an exercise machine.” ’261 application, at 3. The location of those handles relative to the other components is one of their structural attributes that enables performance of the rowing motion against the selected resistance. ’261 application, at 4 (“The declining, substantially linear path [of the pulled handles] enables the user to maintain proper biomechanical alignment of the force angle being applied to the grip. This allows for a fairly consistent torque application at the shoulder throughout the range of motion of the exercise.”).

Consequently, the CAFC indicated that the relevant question before the Board should have been whether the apparatus described in the ’447 patent was “‘made to,’ ‘designed to,’ or ‘configured to,’” allow the user to perform a rowing exercise by pulling on the handles as presently claimed.

The CAFC noted that the ’447 patent’s written description describes the exercise machine’s structure as allowing a movement that “simulates as natural a human musculoskeletal outward pushing motion as possible while maintaining proper biomechanical alignment of the user’s joints.” ’447 patent column 11, lines 61-64; see also id. column 2, lines 37-41 (stating that the position of the machine and handles allows the exercising user to “maintain the proper biomechanical alignment of the joints” and “the proper alignment of the wrists”).

With this in mind, the CAFC found that there is no question that the cited ’447 patent does not have handles that are adapted to be pulled in a rowing motion, in spite of the fact that its handles could be pulled.

The CAFC held that rather than merely showing that the prior art was capable of a pulling motion, the Board should have determined whether it would have been obvious to modify the prior art apparatus to arrive at the claimed rowing machine. As to this point, the PTO brought no argument.

Therefore, the CAFC could not find that it would have been obvious to modify the prior art.



Prosecution Tips

This case clarified that the deference given to the phrase “adapted to” is not limited to litigation, but is appropriate for prosecution. The use of the phrase “adapted to” (or “configured to”) to recite a function, in conjunction with explicit specification support describing what function is intended by the “adapted to” clause, can be a creative limitation to overcome prior art that is otherwise sufficiently different from the claimed invention and merely “capable of” performing the recited function. Such limitations should not be routinely disregarded by examiners.




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