Appeal 2007-2815
Application 10/498,809
The Examiner argues that claim 29’s “wherein” clause, functionally
limiting the system’s configuration with respect to its use of ambient air and
circulated coolant, does not carry any patentable weight (Answer 11-12).
Therefore, the Examiner argues, a prior art apparatus meeting all of the
recited structural limitations will anticipate claim 29, whether or not the
apparatus is capable of performing the recited functions (see id. at 12).
We do not agree. It is well settled that “[a] patent applicant is free to
recite features of an apparatus either structurally or functionally.” In re
Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Thus, while
“‘[f]unctional’ terminology may render a claim quite broad . . .[,] a claim
employing such language covers any and all embodiments which perform
the recited function.” In re Swinehart, 439 F.2d 210, 213 (CCPA 1971); see
also Schreiber, 128 F.3d at 1478-79 (holding that a prior art apparatus
meeting all claimed structural limitations was anticipatory because it was
inherently capable of performing the claimed function).
Claim 29 therefore encompasses devices that have the recited
components, and which are capable of performing the recited functions.
Claim 29 states that the “inter-connection” of the nine named components is
“provided such that ambient air and coolant circulated from the vehicle drive
system can both partially or fully be used as a heat source and a heat sink in
a heat pump mode and a comfort cooling mode, respectively.”
It is well settled that “claims in an application are to be given their
broadest reasonable interpretation consistent with the specification and that
claim language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Sneed, 710 F.2d 1544,
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