Board of Patent Appeals Rules on “Intended Use” Argument in 102 Rejection

Written by Mark Terry

On Friday, the Board of Patent Appeals and Interferences (BPAI) rejected the well-known “intended use” argument in favor of a Patent Examiner’s 35 U.S.C. 102 anticipation rejection. As a Miami Patent Lawyer, I found the Ex parte Crabtree decision interesting because it confirmed my own abandonment of the “intended use” argument in the course of patent prosecution.

The Ex parte Crabtree decision involved a claim for a mattress spring that performed a specific task. Specifically, the mattress spring “deflects debris.” The Appellant found a prior art reference that had the same structure as Appellant’s claim, but did not disclose a “deflecting debris” function. Appellant argued that since the prior art reference did not perform the “intended use” of Appellant’s claimed invention, there was no anticipation under 35 U.S.C. 102.

The law on this issue states: “It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted). Although “[a] patent applicant is free to recite features of an apparatus either structurally or functionally . . . choosing to define an element functionally, i.e., by what it does, carries with it a risk.” Id. at 1478. Therefore, since the prior art reference had the identical structure as Appellant’s claim, the BPAI decided the fact that it didn’t disclose a “deflecting debris” function was irrelevant.

For the patent practitioner, this Board decision highlights a common pitfall in claim construction. We often want to describe elements of a physical apparatus using claim language that includes functionality and intended use of the elements and apparatus. This type of language, however, does not always belong in claim language and is risky (see above). When claiming a physical apparatus, we must focus on the structure of the apparatus and how that structure is different from the prior art. When writing claims for a physical apparatus, I like to think in terms of patent prosecution. Ask yourself, “can I point to one or more physical elements of this apparatus and say – ‘the prior art does not disclose this element’?”


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