A limitation that only recites a correlation between a claim feature and a performance property does not carry any patentable weight. Here, for example, a “weight concentration ratio” claimed as being selected to correlate with how damaging the resulting solution is to fabrics was found to be insufficient to garner patentable weight against the prior art. “That aspect does no more than assert that there is some association between a chemical feature and a performance property of the claimed product, but the association does not alter what the product is or even does.” It may therefore be best to more explicitly claim a desired property in terms of the recited elements or steps rather than as an associated performance statement.
Background / Facts: The application on appeal here from rejection at the PTO is directed to mixtures of cleaning components that are safe for fabrics. During a broadening reissue, the applicant added a claim reference to the “weight concentration ratio” correlating to how damaging the resulting solution is to fabrics.
Issue(s): Whether such a “correlating” limitation is sufficient to garner patentable weight against the prior art.
Holding(s): No. “Because claim 19 claims a product, a prior-art product that has the claimed defining characteristics falls within the claim. Here, nothing material to anticipation is added by the ‘correlating’ aspect of the claim element: ‘weight concentration ratio correlating to the quality of fabric safety of the product solution selected with the range of damaging to abated damage to cotton-safe.’ That aspect does no more than assert that there is some association between a chemical feature and a performance property of the claimed product, but the association does not alter what the product is or even does. If the product is old, such a newly discovered fact about the association between its components or functions does not remove it from the domain of prior-art products.”