Examiners at the USPTO sometimes stretch the prior art in creative ways in order to reject claims. Unfortunately there is little downside for them to stretch the prior art too far. One way in which Examiner bend references is to assert that while a reference or combination may not show certain features, they are "capable of" having those features. This of course is very convenient because with such logic it is possible to reject almost any claim no matter the shortcomings of the prior art.
IBM recently faced such a rejection and took the case to appeal before the PTAB. The case (14/498,327) relates to a vehicle refueling monitor. Claim 1 is reproduced below.
The Examiner could not find any prior art that generated a list of fuel stations which were both within the driving range and outside the driving range but with a service for delivery of fuel within the range. So the Examiner tried a flurry of specious arguments to maintain the improper rejection, including the idea that the applicant was simply claiming a capability of the prior art and that the cited prior art was "capable of routinely performing the claimed functions." Predictably, the Board reversed on all grounds.
The part of the rejection relating to the prior art being "capable of performing the claimed functions" is a red flag that that the Examiner is conflating multiple issues. First, this inherently implies that the Examiner is considering certain features as purely functional (which is wrong here because these are claimed actions of a method, not functional features in a structural claim). Second, the Examiner is relying on the notion that prior art which shows the claimed structure, but not the claimed function (but which is nevertheless capable of performing that function) is sufficient to reject the claimed functional feature. The second part is equally wrong here because the issue is not missing structure, but missing actions of a method. A third point is that even if the claims were claiming structure and the programming for these actions, that situation is inapplicable.
While IBM's brief did not pick up on these issues, the Board did and its decision explicitly addresses them. Specifically, the Board explained the law and why the "capable of" rationale did not apply to these claims:
Further, even assuming the computer of Stabler were capable of being modified (e.g., programmed) to generate a "list also comprising fuel stations which are outside the driving range of the road vehicle which have a service for delivery of fuel," as claimed, this fails to satisfy the "capable of' test, which requires that the prior art structure be capable of performing the function without further programming. Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011) (discussing Microprocessor Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d 1367 (Fed. Cir. 2008)). When the functional language is associated with programming or some other structure required to perform the function, that programming or structure must be present in order to meet the claim limitation. Id. The Examiner has not shown by a preponderance of the evidence that the computer of Stabler, as modified by Pudar, would have programming or structure needed to generate the claimed list.
So, be wary of rejections where the Examiner relies on the "capable of" test and make sure to point out why the test has been missapplied in contexts such as illustrated in this case.