In many cases, when patent examiners cannot establish a prima facie case of obviousness using existing prior art, they will turn to “intended use” as a catch-all to try to complete their rejections. Intended use-based rejections can be quite subjective, and as such are subject to abuse. However, with proper arguments, these rejections can be overcome.
“[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co.v.Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). As such, as a general rule, the manner of operating a device does not differentiate apparatus claims from the prior art. On the other hand, patent claims can distinguish from the prior art by claiming functional features which are a result of structural differences. A claim term is functional when it recites a feature “by what it does rather than by what it is” (e.g., as evidenced by its specific structure or specific ingredients). In re Swinehart, 439 F.2d 210, 212, 169 USPQ 226, 229 (CCPA 1971).
This subtle distinction becomes an issue when a patent applicant encounters prior art that has a difference in the use and/or operation of the device compared to the claimed invention. Such was the case for our client in Ex Parte Adams et al., an appeal before the US Patent Trial and Appeal Board. In this case, the primary argument was regarding a claim limitation relating to the positioning of a sprayer to spray 5-50% of the surface area of a substrate. The prior art did not teach this claim limitation, and the examiner admitted as such. However, the examiner considered this positioning to be an “intended use.” Thankfully, the Board agreed with us, and reversed the examiner’s rejection.
Through our persuasive arguments, we were successful in convincing the Appeal Board of the patentability of these claims, overcoming the intended use rejection. The key argument being that the claimed structure resulted in the unique spray function that was claimed.
Lambert Shortell & Connaughton has a great deal of experience overcoming these intended use obviousness rejections at the USPTO to obtain patents for our clients, as well as in ligation and before the US Patent Trial and Appeal Board to defend our clients’ interests.
