Tom Brody


Claims in patents include both structural elements and functional elements. Functional elements occur in various categories: (1) Functional elements that mandate a particular range of structures that are able to perform the required function; (2) Functional elements that mandate a particular cooperation between structures; (3) Compound noun/function functional elements, (4) Active-type functional elements; (5) “Capable of”-type functional elements, (6) Single-word structural elements that are typical nouns, but that are also functional elements, e.g., “plasticizer,” and (7) Quasi-functional elements that lack any patentable weight. This article discloses which of these types of functional elements confers the broadest claim scope, and which are most resistant to rejections under 35 U.S.C. § 102 or 35 U.S.C. § 103. The author also announces the discovery of a paradox in patent law, namely, the Newman Paradox, and compares it with another paradox, the Wands-Vaeck Paradox. This article describes two different traps, which can result from a failure to understand the proper construction of functional elements. These traps are The Hough/Hovath Trap, and The Trap of In re Robertson. This is the first article to provide an in-depth analysis of cases from the Patent Trial and Appeal Board (“PTAB”), previously known as the Board of Patent Appeals and Interferences (“BPAI”) (“Board”).