Performing an action to achieve a particular goal is properly limiting when the goal “provides the criteria by which the previously-recited [] limitation is analyzed.” For example, comparing memory locations “to verify” their accuracy indicates how the comparing is to be performed, and is therefore a true limitation, not merely a statement of intended use.
Background / Facts: The application on appeal from the Board relates to the diagnosis of memory device failures. The claims are directed to verifying the accuracy of a computer’s logical-to-physical memory mapping software and recite “comparing said fail memory locations derived by said logical-to-physical mapping software to said various predetermined memory locations to verify the accuracy of said logical-to-physical mapping software.” The Examiner and the Board refused to give any patentable weight to the feature specifying that the comparison is done “to verify the accuracy …,” alleging that it is “a statement of intended use and does not limit the claims.”
Issue(s): Whether the stated reason for performing the comparison is merely a statement of intended use.
Holding(s): No. In what amounts to a one sentence opinion, the court quickly shot down the PTO’s intended use assertions: “Not only does the ‘to verify/verifying’ language refer to the ‘essence of the invention’ [as argued by the applicant based on precedent], it also provides the criteria by which the previously-recited comparing limitation is analyzed.”