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Intended Use - "Configured To"


The phrase “configured to” is commonly recited in claims because it can be useful in describing certain features and the relationships they share. However, some Examiners occasionally take the position that the words following the phrase “configured to” do not have patentable weight because they are allegedly merely descriptive of an intended use. However, this application of intended use is generally improper and it may be beneficial to address such a rejection as follows.

Example Argument

On page [PAGE NUMBER], the Office Action alleged that the phrase [INTENDED USE PHRASE] has not been given patentable weight because it is preceded by the phrase “configured to,” and, therefore, is merely descriptive of an intended use. Applicants respectfully submit that this interpretation is improper.

It is well established that a claim term is to be accorded “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention” (see Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005)). Phillips also indicated that evidence for the meaning of a term may be derived from “the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art” (see Id. at 1314).

Applicants respectfully submit that the present specification supports an interpretation where the phrase “configured to” denotes an actual state of configuration that fundamentally ties [INTENDED USE PHRASE] to the physical characteristics of the feature preceding the phrase “configured to”. As a result, the disputed claim language reaches well beyond merely describing an intended use since the claims actively recite an actual state of configuration. The Office Action presented no evidence or reasoning why one of ordinary skill in the art would interpret the phrase “configured to” as merely denoting an intended use. Similarly, Applicants found no evidence or reasoning supporting this position in the claims, specification, prosecution history and extrinsic evidence.

Applicants respectfully assert, therefore, that the rejection is improper. Indeed, Applicants respectfully submit that the lack of evidence and reasoning alone renders this rejection improper. Accordingly, it is respectfully requested that either additional evidence be provided or that this rejection be withdrawn.

Important Note

In addition to the example discussed above, it is advisable to present arguments distinguishing the claimed invention over the cited art when responding to an art-based rejection.