An element that is “adapted to” perform a particular function in the sense of being specially “designed or constructed” for that purpose (as made clear by the specification) is not anticipated or rendered obvious by a structure specifically designed or constructed for a different purpose simply because it may be physically possible for that structure to be used in the manner claimed. The proper inquiry remains “whether it would have been obvious to modify the prior art apparatus to arrive at the claimed [invention].” The burden for showing obviousness is even higher when the different purpose is the opposite of that claimed. “Physical capability alone does not render obvious that which is contraindicated.”
Background / Facts: The application on appeal here from rejection at the PTO discloses an exercise machine on which a user can perform a rowing motion against a selected resistance, thereby strengthening the back muscles. In this regard, the claims recite a first handle portion “adapted to” be moved from a first position to a second position “by a pulling force exerted by a user on the first handle portion in a rowing motion.” In contrast to this type of pushing motion, the prior art relied upon by the PTO was entitled “Chest Press Apparatus for Exercising Regions of the Upper Body,” and describes a chest press exercise machine where the user performs the exercise by pushing on the handles to overcome the selected resistance. Nevertheless, “[t]he Board deemed it reasonable that a user could face the handles of the prior art chest press machine and exert a pulling force on its handles in a rowing motion.”
Issue(s): Whether the apparatus described in the prior art was “adapted to” allow the user to perform a rowing exercise by pulling on the handles in the manner claimed.
Holding(s): No. “We have noted that, ‘the phrase ‘adapted to’ is frequently used to mean ‘made to,’ ‘designed to,’ or ‘configured to.’ … Although the phrase can also mean ‘capable of’ or ‘suitable for,’… here the written description makes clear that ‘adapted to,’ as used in the … application, has a narrower meaning, viz., that the claimed machine is designed or constructed to be used as a rowing machine whereby a pulling force is exerted on the handles.” Under this interpretation of the claims, “[t]here is no question that the [prior art chest press machine] does not have handles that are adapted to be pulled in a rowing motion.” The court went on to chastise the Board for an improper obviousness analysis, noting that “the mere capability of pulling the handles is not the inquiry that the Board should have made; it should have determined whether it would have been obvious to modify the prior art apparatus to arrive at the claimed rowing machine.” In so doing, the court highlighted what it saw as a nonsensical result of the improper analysis, further noting that “[a] chest press machine is not a rowing machine” and that “anyone who has used exercise machines knows that a sure-fire way to cause injury is to use a machine in a manner not intended by the manufacturer.”