Today's Board of Patent Appeals and Interferences (BPAI) decision of Ex parte Nakamura et al , which reversed a Patent Examiner's 35 U.S.C. 103 obviousness rejection, was remarkable because it illustrated a method for reversing an obvioounsess rejection. As a Miami Patent Lawyer with a large patent docket, the Ex parte Nakamura was educational because it showed me where I might find a hidden structural limitation in an apparatus claim.
Ex parte Nakamura involved a box-like positioning apparatus that included various moving parts. The claim element at issue stated that the amount or distance a particular moving member can be moved was limited to a particular distance. The Examiner gave this claim element short shrift, likening it to a non-existent limitation. But the Board disagreed and found this to be a tangible, structural claim limitation. The Board stated: "as a matter of claim construction, in giving the claim terms thereof the broadest reasonable interpretation consistent with the specification, we agree with Appellants that claim 1 specifies ... thus specifying a structural configuration." See, e.g., In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010) (quoting In re ICON Health & Fitness, Inc., 496 F.3d 1374,1379 (Fed. Cir. 2007) (citing In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)); In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997).
The moral of the story here is that when it comes to apparatus claims, every claim limitation need not be a positively recited, physical structure. Claim limitations, even structural ones, can be inferred from claim language that indicates what a physical element is capable or not capable of doing. The example in the Nakamura case is a claim limitation stating how far a physical element may be moved.