A functionally-described element “adapted to” perform a plurality of functions does not exclude multiple elements performing those functions when no structural limitations are recited. Here, for example, a “link program” adapted to “both … interrupt streaming of the video … [and] access ancillary content” was found to be anticipated by a system where multiple programs together perform these two functions because the claims and specification imposed no limits on how these two functions must be programmed. It may therefore be best to provide at least a dependent claim (and corresponding description) reciting in more detail how a functional element is implemented if those details are at all pertinent.
Background / Facts: The patent on appeal here from rejection at the PTO under covered business method (“CBM”) proceedings is directed to creating and distributing videos with clickable links. When a user clicks on a link, the video is paused and the user is directed to a web page with “ancillary content” (e.g., to buy merchandise). The claims recite creating “a link program adapted to both … interrupt streaming of the video … [and] access ancillary content.”
Issue(s): Whether the claims require a single program to perform both of the recited functions, excluding systems where multiple programs together perform the functions, as in the prior art.
Holding(s): No. “First, the claim language is silent on this question. The claims require that ‘a link program’ is ‘adapted to’ ‘interrupt[ing] …’ and ‘access[ing] …’ functions, but impose no limits on how these two functions must be programmed. The step of ‘creating a link program’ could involve creating two separate executables that are invoked serially, or a single executable that only need be called once. It could also involve creating a single executable with multiple parameters such that the executable can be invoked once with one set of arguments to perform the ‘interrupt[ing] …’ function and invoked a second time with another set of arguments to perform the ‘access[ ing] …’ function. Further, the claims only require that the ‘link program’ be ‘adapted to’ perform these functions, so it could also be programmed such that it only helps initiate these functions, as opposed to performing these functions itself. The specification also imposes no restriction on how a ‘link program’ must be structured, as it describes the ‘interrupt[ing] …’ and ‘access[ing] …’ operations in only functional terms.”