cluster of thumb-associable keys, whereby [6] “the information is entered into an electronic
system.@ Accordingly, per requirements [2] and [6], the hand-held device must be capable of
entering information to an electronic system.
Goddard, as best we can understand its argument, contends that there are only four
requirements ([1], [3], [4], [5]) in Count 1. Goddard, however, has not provided a convincing
explanation of why we are to ignore the plain language of the count with respect to requirements
[2] and [6]. Specifically, Goddard states that:
The party Gambaro does not seem to argue against the fact that the
invention of the count requires ergonomic structure but seems to
want this Board to impose a structural requirement on the count
which does not exist. The “whereby” clause [6] helps define the
purpose of the invention but it is not structure. No one can prove a
“whereby” clause because it does not exist in tangible form.
(Goddard’s Brief, Paper No. 223, p. 3, bracket [6] added). Accordingly, Goddard appears to
argue that the capability of entering information into an electronic system cannot be proven. Yet
we are not persuaded that functional features exist only in the abstract and thus are incapable of
being proven. A completed device can be activated, operated, and then observed to determine if
the claimed functional features are performed. For example, a switch must switch; a transmitter
must transmit; a light bulb must light; a heater must heat. Thus, Goddard has failed to convince
us that his alleged predicament is real – that functional features cannot be proven. Where the
party charged with the burden of proof is incapable of proving a claim requirement, we do not
eliminate the claim requirement, but rather, hold that the party has failed to meet its burden of
proof.
Goddard’s attempt to ignore the plain language of the count overlooks established
precedent. When the "whereby" clause recites a positive limitation to the claim, it will be given
effect whereas when it merely states the result of the limitations in the claim the clause is
construed as adding nothing to the patentability or substance of the claim. Compare Simpson
et al. v. Neracher et al., 191 F.2d 416, 432, 91 USPQ 43, 57 (CCPA 1951) and Israel v.
Cresswell, 166 F.2d 153, 156, 76 USPQ 594, 597 (CCPA 1948). The whereby clause [2]
requires that “information is entered into an electronic system.@ Moreover, in addition to the
whereby clause, this feature is already required by other limitations of the count. Thus, this
feature must be accounted for when demonstrating the reduction of each element of the count.
Requirement [2], entering information into an electronic system, is consistent with the
limitation recited by the whereby clause [6]. The drafter of Gambaro claim 1 stated the function
of transferring information to an electronic system, not once, but twice. Thus, the count provides
a unified and internally consistent recitation of the invention as it begins and ends with
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