Application of the "Capable of" Test when a Controller with Associated Programming is Claimed

It is firmly rooted that because an apparatus is a structure, an apparatus must be distinguished from prior art on the basis of its structure, and where a prior art structure is inherently “capable of” performing the claimed function of the apparatus, the burden shifts to the applicant to show that the claimed function patentably distinguishes the claimed structure from the prior art structure. See, In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997); In re Hallman, 655 F.2d 212, 215 (CCPA 1981). However, clarification of the “capable of” test is necessary when the claimed structure is a controller and the claimed function is software. This was the chief issue before the Board of Patent Appeals and Interferences in Ex parte Wheat, et al. (Appeal 2010-008139 in U.S. application serial no. 10/791,428).

The invention at issue in Ex parte Wheat, et al. concerned an energy management system that controls the temperature of a vehicle fuel cell when the vehicle is not running, to prevent freezing of water in the fuel cell in cold environments. In the relevant part, the sole independent claim on appeal recited “a controller that controls said hydrogen supply and said air supply to power said heater to warm said fuel cell stack and said water supply when said vehicle is not running.”

Prior art disclosed a programmable logic controller or other processing unit that maintains the temperature of a vehicle fuel cell at its optimum operating temperature while the vehicle is running. The Examiner rejected the independent claim as anticipated by the prior art.

After summarizing legal precedent on the “capable of” test, see, In re Ludtke, 441 F.2d 660, 664 (CCPA 1971); Schreiber, 128 F.3d at 1478, the Board noted that the Examiner’s position was that the prior art disclosed using a fuel cell to power a resistor soon after start-up to bring the fuel cell stack up to operating temperature, and that start-up of the fuel cell did not require the vehicle to be running. Nevertheless, the Examiner did not point to any disclosure to show that the prior art fuel cell is started without starting up the vehicle motor. To the Examiner, the prior art controller was the same as the claimed controller because the prior art controller was capable of heating the fuel cell stack with or without the vehicle running. However, the Board disagreed with the Examiner’s application of the “capable of” test and reversed the appealed rejections.

The Board stated that while it might be possible to install software that would allow the prior art controller to warm the fuel cell stack and the water supply when the vehicle is not running, the “capable of” test requires that the prior art structure be capable of performing the function without further programming. See, Typhoon Touch Technologies, Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011) (discussing Microprocessor Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d 1367 (Fed. Cir. 2008)). When the functional language is associated with programming or some other structure required to perform the function, that programming or structure must be present in order to meet the claim limitation. Id. The Board concluded that while in some circumstances generic structural disclosures may be sufficient to meet the requirements of a “controller,” see, Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1364 (Fed. Cir. 2012) (citing Telcordia Techs., Inc. v. Cisco Sys., Inc., 612 F.3d 1365, 1376-77 (Fed. Cir. 2010)), this was not the case with the prior art at issue.

Accordingly, Ex parte Wheat, et al. is a reminder of the clarified “capable of” test that applies when the subject matter claimed is a controller with associated programming.