Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements. Thus, “[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935).
In Otto, the claims were directed to a core member for hair curlers (i.e., a particular device) and a method of making the core member (i.e., a particular method of making that device) and “not to a method of curling hair wherein th[e] particular device is used.” 312 F.2d at 940. The court held that patentability of the claims cannot be based “upon a certain procedure for curling hair using th[e] device and involving a number of steps in the process.” The court noted that “the process is irrelevant as is the recitation involving the hair being wound around the core” in terms of determining patentability of the particular device. Id. Therefore, the inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.
In Young, a claim to a machine for making concrete beams included a limitation to the concrete reinforced members made by the machine as well as the structural elements of the machine itself. The court held that the inclusion of the article formed within the body of the claim did not, without more, make the claim patentable.
In In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967), an apparatus claim recited “[a] taping machine comprising a supporting structure, a brush attached to said supporting structure, said brush being formed with projecting bristles which terminate in free ends to collectively define a surface to which adhesive tape will detachably adhere, and means for providing relative motion between said brush and said supporting structure while said adhesive tape is adhered to said surface.” An obviousness rejection was made over a reference to Kienzle which taught a machine for perforating sheets. The court upheld the rejection stating that “the references in claim 1 to adhesive tape handling do not expressly or impliedly require any particular structure in addition to that of Kienzle.” Id. at 580-81. The perforating device had the structure of the taping device as claimed, the difference was in the use of the device, and “the manner or method in which such machine is to be utilized is not germane to the issue of patentability of the machine itself.” Id. at 580.
Note that this line of cases is limited to claims directed to machinery which works upon an article or material in its intended use.