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Guide to construction

“Product for …” claims and “Method for …” claims, etc.

2.63 A claim to an apparatus or material for a particular purpose is generally construed as a claim to any apparatus or material suitable for that purpose (Adhesive Dry Mounting Co Ltd v Trapp and Co [1910] 27 RPC 341; G.E.C’s Application [1943] RPC 60). Thus “Product for …”claims are interpreted as requiring the particular apparatus or material to be suitable for the defined purpose.

However, the suitability for a particular purpose does not limit the scope of the claim to the apparatus when used in that way (L’Air Liquide Societe’s Application 49 RPC 428). Thus if a prior art document otherwise discloses all of the features of the invention and would be suitable for that purpose, then it will constitute a noveltydestroying disclosure. On the other hand, a known product that has the same material or composition as defined in the claim, but which is in a form which is clearly unsuitable for the stated use, would not deprive the claim of novelty. Likewise, an apparatus which has to undergo physical modification before it can be used for the stated purpose, would not be suitable for the particular use.2.64 For example, in the claim “Hook for fishing comprising features X, Y and Z”, any suitable hook comprising features X, Y and Z that can be used for fishing would anticipate the claim, regardless of whether the hook was stated to be used in fishing or not in the prior art. The claim is also not saved by amending the claim to “a fishing hook comprising features X, Y and Z” as it would essentially mean the same thing. However, the claim would preclude within its scope, a crane hook comprising features X, Y and Z, which would have certain physical limitations (e.g. dimensions and weight) that make it unsuitable to be used as a fishing hook.

2.65 The terms ‘adapted to’, ‘adapted for’, ‘adapted for use’ in a product or apparatus claim would normally be construed as “suitable for”. In FH Brundle v Perry [2014] EWHC 475, the claims relate to a product with the following features: (i) a bracket for securing a fence panel to a fence post, (ii) the bracket being adapted to embrace a corner of a fence panel, (iii) and comprising a main body having a rectangular central portion, (iv) adapted in use to lie along the top of the panel, (v) and two contiguous triangular portions, (vi) adapted in use to lie one each side of the panel, (vii) with one apex adjacent the post and the other spaced therefrom, (viii) and flange means, (ix) adapted in use to lie against and be attached to the post. In construing the terms “adapted to” and “adapted in use to”, Hacon, J. said

“I accept that as a matter of ordinary English usage, ‘adapted’ carries a connotation of adaption or modification in design to achieve the purpose stated in the feature. However in my view… these [features] are to be construed such that they contain no subjective element. To my mind it is irrelevant where the designer started and what adaptations were made in the design process. Because these features must be assessed objectively, it seems to me that ‘adapted to’ and ‘adapted in use to’ mean the same thing as ‘suitable for’.”

However, the judge also cautioned:

“I do not say that in the context of other claims it will never be possible to discern a difference between ‘suitable for’ on the one hand and ‘adapted to’ or ‘adapted in use to’, or ‘constructed to’ for that matter, on the other. But I think in this claim the first three mean the same thing.”

Therefore, in most circumstances, the terms ‘adapted to’, ‘adapted for’, ‘adapted for use’ in a product or apparatus claim would normally be construed as “suitable for”. In a similar vein, the term “specially adapted for” would have the same interpretation as “adapted for” unless reading the specification as a whole indicates otherwise (see subsection v of Section D in Chapter 6, Example 4).

2.66 Another term which may be encountered by Examiners during examination is the term “constructed to receive”. The meaning of this term was considered by Birss J. in Schenck Rotec GmbH v Universal Balancing Limited [2012] EWHC 1920, which relates to a device “constructed to receive” a plurality of balancing weights. Consistent with the judgment in FH Brundle v Perry [2014] EWHC 475, the judge rejected the suggestion that the phrase “constructed to receive” referred to the intention of the device designer (or anyone else), because he found there was nothing in the specification that would lead the skilled person to that conclusion. Instead Birss J. found, in the circumstances, that a skilled person would understand that the device was “constructed in such a way that it is capable of receiving” a plurality of balancing weights. That is, he found there had to be some physical construction of the device which achieves the claimed objective, and the device can actually work this way in practice.

2.67 A claim to a substance or composition “for use …” would normally be construed as a substance or composition “suitable for use …”. However, first medical use claims are an exception to this rule (see sub-section i of Section D in Chapter 8), and the claim is interpreted as being specifically limited to the medical purpose. On the other hand, if the substance or composition has already been known to be useful for a medical purpose, then in order to protect a further new medical use of the substance or composition, a second medical use format (“Swiss type format”) must be used.

2.68 Similarly, in the data-processing/ computer programming field, a claim to a “means for” performing a certain function is interepreted as a means specific for performing the relevant function, rather than merely suitable for carrying out the function. Accordingly, a device without the relevant software that enabled the functions is “not suitable for” the functions in question. A bare computer would not be “suitable for” the activities in the claims because it simply could not achieve them (Rovi Solutions Corporation & Anor v Virgin Media Ltd & Ors [2014] EWHC 1559).

2.69 A claim merely directed to “Apparatus for carrying out the method of … according to claim X”, or some such wording will not normally be clear in scope. The claim should clearly specify the essential features of the apparatus unless all the integers which would constitute such apparatus are clearly implicit in the method claimed.

2.70 The interpretation of a claim directed to a “Method for …” depends on the specific wording of the claim and the specification when read as a whole. When a claimed method or process comprises steps that result in the production of a product, the indication of the intended purpose of the method in a “Method for …” claim would normally be construed as merely suitable for that purpose (i.e, production of a product), rather than as an integral method or process step. Consequently, a prior disclosure of the same method suitable for production of the product, would anticipate a claim to a method or process for that purpose, even when the purpose (i.e., production of the product) is not indicated in the prior disclosure (T 0304/08 Method for reducing malodor/ BASF).