A Hidden Structural Limitation in Apparatus Claims

MARK TERRY, ESQ.

In Ex parte Nakamura, the Board of Patent Appeals and Interferences reversed an obviousness rejection involving a positioning apparatus with several moving components.

The disputed claim language limited how far a particular member could move. The examiner treated that language as though it imposed no meaningful structural restriction.

The Board disagreed. Applying the broadest reasonable interpretation consistent with the specification, it concluded that the movement limitation specified a tangible structural configuration.

The decision shows that an apparatus claim does not need to recite every structural feature as a positively named physical part. Language describing what a component can or cannot do may still define structure.

Practical takeaway: Capability and movement limitations should not automatically be dismissed as intended use. In context, they may impose concrete structural boundaries on an apparatus claim.