Federal Circuit Finds ‘Configured to’ Means ‘Capable of’ in Patent Obviousness Appeal

The US Court of Appeals for the Federal Circuit recently affirmed that, absent specification language supporting a narrower interpretation, the patent claim terms “configured to” and “configured for” are properly construed to mean “capable of” performing the recited function. In a nonprecedential decision, the court rejected the applicant’s attempt to read intent or design-specific limitations into product claims, reflecting the Federal Circuit’s continued skepticism toward importing such concepts into claim construction.

On January 14, 2026, the Federal Circuit issued its decision in In re Blue Buffalo Enterprises, Inc., No. 2024-1611 (Fed. Cir. Jan. 14, 2026), affirming a US Patent Trial and Appeal Board (PTAB) decision that upheld an examiner’s rejection of certain claims of US Patent Application No. 17/136,152 (the ’152 application) as obvious under 35 USC § 103. Writing for the panel, Chief Judge Moore rejected Blue Buffalo’s argument that the PTAB erred in construing functional claim language.

The ’152 application is directed to a packaged wet pet food product comprising a container with deformable sidewalls and an integrally formed tool portion on the bottom wall, which can be used to break up or tenderize the food after dispensing. Representative claim 1 recites, among other elements, a sidewall “configured to be readily deformable” and a tool portion “configured for use in breaking up and/or tenderizing the food product.”

The examiner rejected claims 1 and 3–12 as obvious over Coleman and other prior art references, and the PTAB affirmed. In doing so, the PTAB relied on its own factual reasoning, treated as a new ground of rejection, which Blue Buffalo challenged on appeal.

On appeal, Blue Buffalo’s central contention was that the PTAB erred by construing “configured to” and “configured for” as meaning merely “capable of” performing the recited functions. Blue Buffalo argued instead for a narrower construction requiring that the claimed elements be specifically designed to perform those functions.

‘CONFIGURED TO/CONFIGURED FOR’ MEANS ‘CAPABLE OF’

The court rejected Blue Buffalo’s proposed construction and distinguished the functional-claim cases on which it relied, including In re Giannelli, 739 F.3d 1375 (Fed. Cir. 2014), and Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335 (Fed. Cir. 2012), as support for its argument that “configured to” should be construed as “specifically designed to.” In the court’s view, those cases involved different claim language (such as “adapted to”) and specific contextual cues that supported narrower interpretations.

By contrast, nothing in the ’152 application’s specification indicated that “configured to” or “configured for” should be limited to elements intentionally or specially designed for the recited functions. Absent such guidance, the court concluded that the PTAB correctly applied the ordinary meaning of the terms, that is, that the claimed elements need only be capable of performing the function. Finding no error in the PTAB’s construction, the court affirmed.

Because Blue Buffalo did not separately challenge the obviousness determination under the PTAB’s adopted construction, the Federal Circuit affirmed the rejection of the claims as obvious over the prior art.

PRACTICAL CONSIDERATIONS

While nonprecedential, In re Blue Buffalo reinforces the Federal Circuit’s broader reluctance to read intent or design-based limitations into product claims through functional language alone.

One response is to draft claims that more explicitly recite the structural features responsible for the claimed functionality. However, patent practitioners often rely on “configured to” language precisely because of its flexibility, allowing claims to encompass later-developed structures that achieve the same functional result in different ways. Narrowing claims to specific structures at the outset may reduce claim-construction risk, but it can also forfeit that strategic breadth.

Applicants should therefore use “configured to” language with care. Where functional language is employed, applicants may wish to include dependent claims and additional independent claims that recite specific structural features as well as method claims directed to the functional behavior itself. Doing so can preserve flexibility while mitigating the risk that broad functional language in the product claims will later be construed more expansively than intended and potentially invalidating.