data/2100/s2115.html.txt

[
# 2115 Material or Article Worked Upon by Apparatus [R-07.2015]

**MATERIAL OR ARTICLE WORKED UPON DOES NOT LIMIT APPARATUS CLAIMS** Claim analysis is highly fact-dependent. A claim is only limited by
 positively recited elements. Thus, "[i]nclusion of the material or article worked upon
 by a structure being claimed does not impart patentability to the claims." *In
 re Otto,* 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also *In
 re Young,* 75 F.2d 996, 25 USPQ 69 (CCPA 1935).
 


In *Otto,* the claims were directed to a
 core member for hair curlers (i.e., a particular device) and a method of making the core
 member (i.e., a particular method of making that device) and "not to a method of curling
 hair wherein th[e] particular device is used." 312 F.2d at 940. The court held that
 patentability of the claims cannot be based "upon a certain procedure for curling hair
 using th[e] device and involving a number of steps in the process." The court noted that
 "the process is irrelevant as is the recitation involving the hair being wound around
 the core" in terms of determining patentability of the particular device.
 *Id.* Therefore, the inclusion of the material or article worked
 upon by a structure being claimed does not impart patentability to the claims.
 


In *Young,* a claim to a machine for making concrete
 beams included a limitation to the concrete reinforced members made by the machine as
 well as the structural elements of the machine itself. The court held that the inclusion
 of the article formed within the body of the claim did not, without more, make the claim
 patentable.
 


In *In re Casey,* 370 F.2d 576, 152 USPQ 235 (CCPA
 1967), an apparatus claim recited "[a] taping machine comprising a supporting structure,
 a brush attached to said supporting structure, said brush being formed with projecting
 bristles which terminate in free ends to collectively define a surface to which adhesive
 tape will detachably adhere, and means for providing relative motion between said brush
 and said supporting structure while said adhesive tape is adhered to said surface." An
 obviousness rejection was made over a reference to Kienzle which taught a machine for
 perforating sheets. The court upheld the rejection stating that "the references in claim
 1 to adhesive tape handling do not expressly or impliedly require any particular
 structure in addition to that of Kienzle." *Id.* at 580-81. The
 perforating device had the structure of the taping device as claimed, the difference was
 in the use of the device, and "the manner or method in which such machine is to be
 utilized is not germane to the issue of patentability of the machine itself."
 *Id.* at 580.
 


Note that this line of cases is limited to claims directed to machinery
 which works upon an article or material in its intended use. 
 


[[top]](#top)


]