Guest post by John Russel.
Patent law can be confusing and complex. There is deceptive attraction in simplifying intricate rules and doctrines into basic concepts that match the lay meaning of their labels.
Consider the issue of intended use. This shorthand term (discussed in various posts here) relates to different aspects of patent law depending on context. In some cases, it relates to whether claim elements are limiting (and must be shown in the prior art for a proper rejection). In another context, intended use relates to whether a combination is proper (e.g., whether features from one reference can be combined with another reference in a way that is suitable for the intended use in that reference). In still another context, intended use comes in when evaluating design choice (e.g., see In re Leshin, 227 F.2d 197 (CCPA 1960)). Both applicants and examiners can mix up these doctrines. Thus, it is important to separate these contexts when responding to rejections by presenting arguments to the Office, especially on appeal.
In a first context, the intended use concept may or may not negate features recited in a claim. “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). On the flip side “apparatus claims cover what a device is, not what a device does,” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). For example, an examiner desirous of ignoring functional limitations in a device claim may cite intended use in an attempt to do so. Whether or not this is or is not correct then determines on the application of the rules to the facts of the case. See also MPEP 2114, 2111.02.
In a second context, the issue focuses on whether a modification or combination is proper. For example, MPEP 2144.07 discusses the selection of a known material based on its suitability for its intended use to support a prima facie obviousness determination. Likewise, under MPEP 2145, it is relevant to the obviousness analysis because if proposed modification would render the prior art being modified “inoperable for its intended purpose,” then there is likely no suggestion or motivation to make the proposed modification. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984).
To see an example of these being mixed up, consider US 14/828,272, which ended up going to the Board. The invention relates to a cleaning package assembly for health care applications:
10. A cleaning package assembly, comprising:
one or more cleaning cloths disposed within the package, each cleaning cloth defining a plurality of portions thereof; and
an instructional insert, disposed within the package with the one or more cleaning cloths and instructing an order of using the plurality of portions to clean a predefined area;
the instructional insert comprising a plurality of sequential numerical indicia defining a cleaning order for the predefined area; and each portion of the plurality of portions comprising one of the plurality of sequential numerical indicia to indicate the order of using the plurality of portions.
The examiner relied on a combination of references to meet all of the limitations of claim 1, but the combination required using bound panels of one reference (Williams) to replace the separate towelettes of the other reference (Weinberger) aimed at cleaning CFLs in a way to avoid contact with heavy metals. The applicant pointed out that doing so would put the user at increased risk of health effects because the purpose of the secondary reference required separate towelettes to avoid contact with heavy metals, and thus would render the combination unfit for its intended use. The examiner responded by arguing the other type of intended use:
The PTAB thus had to point out to the examiner that the rejection was mixing up disparate concepts:
However, in accordance with the applied rejection, the Examiner is modifying the kit of Weinberger to incorporate the bound cloth panels of Williams for the alleged purpose of reducing cross-contamination. Thus, the disclosed intended use or purpose of Weinberger is relevant to the obviousness analysis because if proposed modification would render the prior art invention being modified “inoperable for its intended purpose,” then there is likely no suggestion or motivation to make the proposed modification. Moreover, the issue at hand is not the “intended use of the claimed invention,” but rather, how the suggested modification of the kit of Weinberger would impact the intended use and operability thereof, and whether the Examiner’s articulated reasoning for the suggested modification, i.e., to reduce cross contamination, is supported by rational underpinnings.
So, don’t give in to examiners that dismiss your arguments by mixing up concepts that use similar wording.
This article has been published first here.