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 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:

a package;

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.

 As discussed in a previous post (here), certain aspects can be addressed only by petition, whereas others can be addressed only by appeal to the board. Most of the time the demarcation is clear.

But imagine you are at odds with the examiner on whether a certain element is, or is not, a means plus function element. As discussed in previous posts, this issue can be outcome-determinate in some cases. Now imagine the examiner states that the examiner’s claim interpretation is non-appealable.  Further imagine two supervisors sign-off on that reasoning in an examiner’s answer. Well, you don’t have to imagine it - rather just read the prosecution history for Application 15/336,502.  It is disappointing that a seasoned examiner, and two supervisors, would at best be so uninformed to believe such things, and at worst purposely try to mislead an applicant. Below are some screen shots in case you think this is made up:

The PTAB made a note to hopefully clear this up for the examiner (and 2 supervisors):

Given the above, it should not come as a shock that this examiner illustrates many traits of an unreasonable examiner. As with most such examiners, there was a restriction. The applicant tried numerous interviews, and was lured into an RCE, to no avail.  Eventually, the applicant learned the score of the situation and started preparing for an appeal (and did not waste time trying to petition the interpretation), including filing a 132 declaration to put evidence on the record as to various issues, including claim interpretation, while the examiner continued to reject the application and pile on various 112 issues.

Looking to the means plus function issues in this case, claim 1 is below:

1. A sample analysis cartridge comprising:
a housing;
an input tunnel that extends from an aperture in the housing, the input tunnel configured to permit insertion of a sample collection device having a distal portion adapted to be exposed to a sample;
a reservoir disposed within the housing adjacent to the input tunnel and configured to hold a fluid, the reservoir further configured to receive the sample collected by the sample collection device;
a sealing material configured to fluidicly seal the fluid within the reservoir; and
a seal piercer comprising an engager, a slot, and a piercer, the seal piercer disposed within the housing such that the piercer is adjacent to the reservoir and the engager is within the input tunnel, the engager configured to be contacted by the sample collection device within the input tunnel to slide the seal piercer via the slot during insertion of the sample collection device in the input tunnel, responsive to force applied by the sample collection device, such that the piercer moves in a first direction and a second direction, different from the first direction, to pierce the sealing material to vent the fluid in the reservoir.

The PTAB confirms that, when the claims do not use the word “means”, the examiner bears the burden of demonstrating that 112(f) should apply to the claims. One might notice that many PTAB decisions on 112(f) interpretations do not begin with this point (since most such appeals involve merely attorney argument rebutting the examiner’s case). But here, because the applicant put evidence in the record (via the 132 declaration), this issue comes into play.  As explained by the PTAB:

Here, none of the disputed limitations use the word “means.” Therefore, Examiner, as challenger, bears the burden of demonstrating that § 112(f) should apply to the claim terms. The Examiner finds the terms “are nonce-type terms that are of Applicant’s own design, and recitations thereto do not provide a clear and sufficient structure as such recitations are drawn to vague descriptors.” Ans. 3–4. The record, which includes the claim language and Appellant’s disclosure, does not support the Examiner’s findings or conclusion that § 112(f) should apply for the disputed terms.

When analyzing whether the presumption against applying § 112(f) is overcome, we consider how a claim limitation is “used in the context of the relevant claim language.” Advanced Ground Info. Sys., Inc. v. Life360, Inc., 830 F.3d 1341, 1348 (Fed. Cir. 2016). Further, “[i]n undertaking this analysis, we ask if the claim language, read in light of the specification, recites sufficiently definite structure,” which avoids application of § 112(f). Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366, 1372–73 (Fed. Cir. 2015) (analyzing specification to determine if term was described in specific structural terms). We address the interpretation of each of the disputed limitations below.

Applying this approach, the PTAB rejected every single one of the examiner’s interpretations. As one example, the examiner alleged that the term “engager” was a nonce-type word and that the specification, while giving examples (elements 380, 380’, and 380’’), did not give a clear structural definition of the term. (As a quick aside, imagine if when drafting a patent application, one had to give a structural definition of every labeled aspect of features in a drawing - the specification length would be staggering.) The applicant asserted that the engager would be understood to connote structure, and that the specification explained that as sample collection device 200 is moved distally through input tunnel 301, slider 322 engages sample collection device 200 by temporarily or permanently coupling engager 380 of slider 322 to engagement zone 209 of sample collection device 200.

The PTAB agreed and marched through each and every 112 issue and found for the applicant, thus reversing all rejections. 

So, remember that examiners will make wild assertions as to their unlimited power and the burden is on the applicant to beware and know the rules and procedures for themselves.

•      Drawing, specification, and claim language objections.  Such objections are often overcome with simple amendments.  However, avoiding such rejections at the last stage of prosecution may be preempted by holistic and detail-oriented patent application drafting at the outset.  The last thing any client wants is a two-month delay and extra prosecution fees over a misplaced lead line.  By focusing on quality over quantity during the drafting process, a patent practitioner can ensure that a Notice of Allowance is received as promptly and inexpensively as possible.Of course, these objections are not always avoidable, as Examiners may have unpredictable standards of allowance or may misuse a Quayle action when an Examiner’s amendment would suffice.  For example, an Examiner may improperly issue a Quayle action to correct antecedent basis or a minor typographical error. 
•        Claims directed to non-elected subject matter have not been canceled.  If a requirement for restriction/election has resulted in non-elected claims being withdrawn, the patent practitioner must cancel the withdrawn claims prior to allowance.  Though this appears to be an avoidable outcome (as the claims may simply be canceled upon election), strategic advantages exist to retaining withdrawn claims through prosecution.  Expensive prosecution of child filings may be avoided by pursuing a winnable petition while having allowable subject matter in your back pocket.  However, as discussed in this post, such a course of action may provide an additional opportunity for the Examiner to prolong prosecution with further rejections.