In re Gianelli: "Adapted to" Limited by the Specification

Category: Claim Construction 
By: Jesus Hernandez, Blog Editor/Contributor  
TitleIn re Gianelli, No. 2013-1167 (Fed. Cir. Jan. 13, 2014).
IssueGiannelli argues that the Board’s decision sustaining the examiner’s rejection is based on an incorrect assertion that the chest press machine disclosed in the ’447 patent could be used as a rowing machine [per the claims] rather than considering how it would be used.
In re Gianelli at *6 (text added).
HoldingBecause the Board determined that the machine claimed in the ’261 application would have been obvious by merely 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 in concluding that the examiner had met his initial burden of establishing a case of prima facie obviousness. [...]. Physical capability alone does not render obvious that which is contraindicated.
Id. at *9 (internal citations omitted).

Procedural HistoryRaymond Giannelli (“Giannelli”) appeals from the decision of the United States Patent and Trademark Office (“PTO”) Patent Trial and Appeal Board (“the Board”) affirming the rejection of claims 1–25 of U.S. Patent Application 10/378,261 (Mar. 3, 2003) (the “’261 application”) under 35 U.S.C. § 103(a) as obvious over U.S. Patent 5,997,447 (the “’447 patent”). Ex Parte Giannelli, No. 2010-007582, slip op. at 5 (P.T.A.B. Oct. 29, 2012) (“Board Decision”).
In re Gianelli at *1-2.
Legal Reasoning (Rader, CJ, Lourie, Moore)
Representative Claim 1 of the '261 application1. 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.
In re Gianelli at *2-3.
"Adapted to" Limitation Interpreted in Light of the Specification
"Adapted to" Construction Limited by DescriptionThe claims of the ’261 application specifically require a “first handle portion adapted to be moved from a first position to a second position by a pulling force . . . in a rowing motion.” [...] We have noted that, “the phrase ‘adapted to’ is frequently used to mean ‘made to,’ ‘designed to,’ or ‘configured to,’ . . .” [...] Although the phrase can also mean “‘capable of’ or ‘suitable for,’” id., here the written description makes clear that “adapted to,” as used in the ’261 application, has a narrower meaning, viz., that the claimed machine is designed or constructed to be used as a rowing machine whereby a pulling force is exerted on the handles.
In re Gianelli at *7 (internal citations omitted).
"adapted to" NOT equal to "capable of" based on DisclosureThe 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. […] Consequently, the relevant question before the Board was 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 claimed in the ’261 application.
Id. at *7-8 (some internal citations omitted).
For the foregoing reasons, the decision of the Board affirming the final rejection of the ’261 application’s claims 1–25 is reversed.
In re Gianelli at *10.

Image Attribution Statement: In re Gianelli at *3.  
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