The Scope of "Configured To" in Patent Claims

The term "configured to" is frequently used in patent claims to define the functionality of a specified structural element. In the holding of Ex parte Thomas Smits (Appeal 2023-003258), the Patent Trial and Appeal Board (PTAB) it was determined that the phrase "configured to" in a patent claim does not necessarily limit the prior art to a showing of a purposeful design that performs a specific function.

In the Smits case, the claim addresses a camera monitoring system for motor vehicles, with independent claim 1 recites, in part:

"At least one controller is configured to: … receive and process signals from the mobile camera, providing image signals for display on the motor vehicle's monitor; - Process transmitted data from the mobile camera, the holder, and/or the front attachment. As a result, it detects which components are interconnected in a signal-transmitting manner and configures the camera monitoring system based on the detected components."

During the appeal from a final rejection, the appellant contended that the dismissal of independent claim 1 under Section 103 of the Patent Act was erroneously based on the potential capabilities of the cited prior art. The appellant maintained that, according to precedent, for prior art to effectively counter claims that recite a structure that is "configured to" perform a function, prior art must demonstrate a purposeful design that achieves the specified function and not merely the capability.

The appellant cited In re Gialnnelli (739 F.3d 1375, 1379, Fed. Cir. 2014) and Aspex Eyewear Inc. v. Marchon Eyewear (672 F.3d 1335, 1349, Fed. Cir. 2012) to support its argument against the cited prior art. Upon reviewing this case law, the PTAB observed that the decisions in each case pertained to the term "adapted to," not "configured to." The PTAB further highlighted that the appellant had not defined "configured to" within the claims or the specification. As a result, the broadest reasonable interpretation of "configured to" was adopted, granting it a broader scope than the narrower interpretation argued by the appellant.