Federal Circuit, January 13, 2014, 2011-1073

In overturning the Patent Trial and Appeal Board (PTAB), the Federal Circuit found that claims in U.S. Application No. 10/378,261 (the "'261 application") were not obvious over the prior art because the claims recited a machine "adapted to" performing a rowing function, whereas the prior are device was merely "capable" of performing such function.

The Federal Circuit determined that the PTAB did not properly address the meaning of the term "adapted to" in relation to the reference and the disclosure in the '261 application's specification. The prior art device included a bench press machine, where a user pushed the handles from a first position to a second position. In contrast, the rowing device claimed in the '261 application was "adapted to" be pulled from a first position to a second position.

In its analysis, the Federal Circuit found that the mere capability of pulling the handles in the prior art device was not at issue. Instead, the issue was whether it would have been obvious to modify the prior art device by showing only that a rowing exercise could be performed on the device. The Federal Circuit found that it could not, citing safety concerns for not using a bench press device as a rowing machine.

This decision demonstrates that functional limitations, coupled with a disclosure that limits the function of the device to a specific design, may overcome prior art that would otherwise obviate the claims.