{"id":106837,"date":"2026-01-23T14:40:35","date_gmt":"2026-01-23T14:40:35","guid":{"rendered":"https:\/\/www.dinsmore.com\/?post_type=publications&p=106837"},"modified":"2026-01-28T14:45:33","modified_gmt":"2026-01-28T14:45:33","slug":"a-case-configured-for-affirmance-federal-circuit-backs-ptab","status":"publish","type":"publications","link":"https:\/\/www.dinsmore.com\/publications\/a-case-configured-for-affirmance-federal-circuit-backs-ptab\/","title":{"rendered":"A Case \u201cConfigured for\u201d Affirmance: Federal Circuit Backs PTAB"},"content":{"rendered":"\n

The Federal Circuit has issued its nonprecedential decision in In re Blue Buffalo Enterprises, Inc.<\/em> affirming the Patent Trial and Appeal Board\u2019s (\u201cBoard\u201d) rejection of several claims of U.S. Patent Application No. 17\/136,152 as obvious. This alert summarizes the case background, the Federal Circuit\u2019s reasoning, and key takeaways for patent practitioners including exercising caution in using the oft-preferred \u201cconfigured to\u201d claim language.<\/p>\n\n\n\n

The \u2019152 application relates to a packaging container for wet pet food. The design, as shown in FIG. 4 of the \u2018152 application below, includes a deformable sidewall that allows a user to squeeze food out of the container and a tool portion with projections formed on the bottom wall that breaks up or tenderizes food. Claim 1 recites that the sidewall is \u201cconfigured to be readily deformable\u201d and that the projections on the bottom wall are \u201cconfigured for\u201d breaking up or tenderizing food.<\/p>\n\n\n\n

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During prosecution, the Examiner rejected claims 1 and 3-12 as obvious over Coleman and other prior art. The Board affirmed and designated its affirmance as a new ground of rejection. Blue Buffalo appealed, challenging the Board\u2019s interpretation of the terms \u201cconfigured to\u201d and \u201cconfigured for.\u201d<\/p>\n\n\n\n

The Federal Circuit reviewed the Board\u2019s claim construction de novo and affirmed. The Federal Circuit rejected Blue Buffalo\u2019s argument that \u201cconfigured to\u201d should mean \u201cspecifically designed to.\u201d In re Blue Buffalo Enterprises, Inc., <\/em>Nos. 2024-1611 (Fed. Cir. January 14, 2026), at 4. Instead, it agreed with the Board that the terms \u201cconfigured to\u201d and \u201cconfigured for\u201d in this context simply mean \u201ccapable of.\u201d Id. <\/em>at 4-5.<\/p>\n\n\n\n

The Federal Circuit distinguished Blue Buffalo from In re Giannelli<\/em> and Aspex Eyewear <\/em>explaining that those decisions interpreted the phrase \u201cadapted to,\u201d not \u201cconfigured to.\u201d Id. <\/em>at 4. Additionally, the Federal Circuit noted that, in each case, the written description supported a narrower interpretation. Id.<\/em> Here, the specification did not suggest that the sidewall and bottom wall projections were specifically designed for particular functions, but merely capable of performing them. Id.<\/em><\/p>\n\n\n\n

Under this construction, Blue Buffalo conceded that it did not challenge the Board\u2019s obviousness determination. Accordingly, the Federal Circuit affirmed the rejection of claims 1 and 3-12.<\/p>\n\n\n\n

The Federal Circuit\u2019s interpretation of \u201cconfigured to\u201d and \u201cconfigured for\u201d in In re Blue Buffalo<\/em> aligns with the decision in ParkerVision, Inc. v. Qualcomm, Inc.<\/em>, where the Federal Circuit similarly declined to narrowly interpret functional limitations without explicit evidence.<\/p>\n\n\n\n

Together, these decisions reinforce a few important points to keep in mind while drafting patent applications:<\/p>\n\n\n\n