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

MARK TERRY, ESQ.

In Ex parte Crabtree, the Board of Patent Appeals and Interferences rejected an “intended use” argument and affirmed an examiner’s anticipation rejection under 35 U.S.C. §102.

The claim concerned a mattress spring that was described as performing the function of deflecting debris. The cited prior art disclosed the same structure but did not expressly state that it performed that particular function. The applicant argued that the missing intended use prevented anticipation.

The Board applied the established rule that reciting a new intended use for an old product does not make the product patentable. Although apparatus elements may be described functionally, doing so creates risk when the prior art already contains the same physical structure.

For physical apparatus claims, the safer prosecution strategy is to focus on structural differences that can be identified in the claim and shown to be absent from the prior art. Functional or intended-use language should not be expected to distinguish an otherwise identical structure.