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[Alistair]

It looks to me that at times it's more useful than others to include in the main claim the purpose of the invention, this to avoid obviousness. I'll make a silly example:
I invented a particular belt that can hold a sandwich, now, in the main claim if I do not include that the main function of the belt is to hold a sandwich I suspect I'd run the risk that the examiner will say "well, it's a belt...", to avoid obviousness I've read some claims where the scope of the invention is made clear in the main 1st claim, have I got this right? Is that why some specify the use of their invention in the main claim? Would it be the case for my wonderful belt?

Thanks

[NJ Patent1]

Alistair; In my view, it's tough to give an answer other than yes, "sometimes" it is helpful.  In my experience, Examiners in the USPTO rarely (never?) give patentable weight to a statement of intended use in a claim preamble.  If I recall, there may be language in MPEP Chpt. 2100 encouraging - or at least suggesting to - Examiners that they do this.  Having said that, I have seen CAFC cases that say a preamble (of which the statement of intended use is part) can be a limitation - and hence potentially relevant to patentability - if it is necessary to understand the context of what is claimed, or if it "breathes life and meaning into the claim."  This is a very fact-sensitive analysis.

If you include the statement of intended use, expect the Examiner to note it and dismiss it.  But you will have something to argue, depending on the facts of your case.  I've never had much success with the argument.  Perhaps other practitioners have and will share. 

[Yak]

I am facing a very similar issue right now with responding to an OA. 

To follow your hypo, the invention is a belt designed to hold a sandwich. The independent claim explicitly stated that the "belt device comprises: ... a sandwich holder for holding a sandwich..." among other structure features of the belt which are rather common in the art. 

The examiner cited a side pack, a pistol holder, a carrying pocket, and cellular phone pocket all as 102 and 103 references to reject the claim.  So sometimes even specifying the use in the claimed limitations will not prevent this type of rejection. 

[rts]

Yes, "sometimes". I can agree with that.

If you think you will need to rely on the intended use for patentability it's best to have it in the claim from the start. If you amend it in, the examiner, who has already made up his/her mind, will likely think you're getting desperate and dismiss it. And by having it in from the start, I mean in the body of the claim (as opposed to preamble) where it will be given a healthy amount of patentable weight.

E.g.,

1. A belt comprising a strip and an attached basket, the basket being configured to hold a sandwich.

[khazzah]

I am facing a very similar issue right now with responding to an OA. 

To follow your hypo, the invention is a belt designed to hold a sandwich. The independent claim explicitly stated that the "belt device comprises: ... a sandwich holder for holding a sandwich..." among other structure features of the belt which are rather common in the art. 
The examiner cited a side pack, a pistol holder, a carrying pocket, and cellular phone pocket all as 102 and 103 references to reject the claim.  So sometimes even specifying the use in the claimed limitations will not prevent this type of rejection. 

Ignoring "intended use" is *very* common. It appears to me that certain Examiners have certain words which they read as triggering intended use, and "for" is probably the most common trigger word.

In such cases, I call the Examiner and ask him what would make him happy: configured to; adapted to; designed to; that [present tense verb] (ie, that holds a sandwich]; [gerund] (ie, holding a sandwich minus the FOR).

Then I evaluate the Examiner's suggested language in the context of infringement, and decide whether or not this is acceptable. If so, amend and move forward. If not, stand and fight on the language as is or amend to something that gives me a stronger argument for patentable weight at the BPAI even if it doesn't satisfy the Examiner.

[Yak]

This makes sense in the context of the rejection since the examiner underlined the word for in each main rejection paragraph of the detailed action. 

[JustAnotherExaminer]

I am facing a very similar issue right now with responding to an OA. 

To follow your hypo, the invention is a belt designed to hold a sandwich. The independent claim explicitly stated that the "belt device comprises: ... a sandwich holder for holding a sandwich..." among other structure features of the belt which are rather common in the art. 
The examiner cited a side pack, a pistol holder, a carrying pocket, and cellular phone pocket all as 102 and 103 references to reject the claim.  So sometimes even specifying the use in the claimed limitations will not prevent this type of rejection. 

Ignoring "intended use" is *very* common. It appears to me that certain Examiners have certain words which they read as triggering intended use, and "for" is probably the most common trigger word.

In such cases, I call the Examiner and ask him what would make him happy: configured to; adapted to; designed to; that [present tense verb] (ie, that holds a sandwich]; [gerund] (ie, holding a sandwich minus the FOR).

Then I evaluate the Examiner's suggested language in the context of infringement, and decide whether or not this is acceptable. If so, amend and move forward. If not, stand and fight on the language as is or amend to something that gives me a stronger argument for patentable weight at the BPAI even if it doesn't satisfy the Examiner.

A belt device comprises: ... a sandwich holder for holding a sandwich...

This invokes 112 6th.
As do the following:

a sandwich holder configured to hold a sandwich.
a sandwich holder adapted to hold a sandwich.
A sandwich holder designed to hold a sandwich.
A sandwich holder <blah> to hold a sandwich.
A sandwich holder <blah> that holds a sandwich.
A sandwich holder which holds a sandwich.


Argue back it's not an intended use, but a 112 6th limitation and he's not examining it properly.

[Yak]

A belt device comprises: ... a sandwich holder for holding a sandwich...

This invokes 112 6th.
As do the following:

a sandwich holder configured to hold a sandwich.
a sandwich holder adapted to hold a sandwich.
A sandwich holder designed to hold a sandwich.
A sandwich holder <blah> to hold a sandwich.
A sandwich holder <blah> that holds a sandwich.
A sandwich holder which holds a sandwich.

Argue back it's not an intended use, but a 112 6th limitation and he's not examining it properly.

Wouldn't this make almost all claims fall under 112, 6th? 

[khazzah]

A belt device comprises: ... a sandwich holder for holding a sandwich... This invokes 112 6th. As do the following:

a sandwich holder configured to hold a sandwich.
a sandwich holder adapted to hold a sandwich.
A sandwich holder designed to hold a sandwich.
A sandwich holder <blah> to hold a sandwich.
A sandwich holder <blah> that holds a sandwich.
A sandwich holder which holds a sandwich.

Your post offered nothing more than a conclusory statement "invokes 112P6". Therefore, I don't find it very helpful.

[khazzah]

Wouldn't this make almost all claims fall under 112, 6th? 

And yet Examiners don't say that all claims fall under 112P6. Nor do the courts. So, gee, maybe it's more complicated that that.

I urge others not generalize JustAnExaminer's statement to then say that any claim of the form [adjective][noun][functional language] invokes 112P6. The MPEP devotes several pages to the analysis required to reach the conclusion that an element does or does not fall under 112P6.

[JustAnotherExaminer]

The MPEP hasn't been updated with the new 112 6th guidelines.

Barring certain exceptions, limitations of the form [adjective][noun][prepositional phrase][functional language] invoke 112 6th.

One exception being when the adjective+noun are "structure" within the context of the art.

Examples of alternative prepositional phrases besides "for" were presented in recent training to examiners.  Any variations using "for", "that", "to", and "which" were explicitly listed as acceptable to invoke 112 6th.

And I don't see how my comment wasn't helpful, as the OP was looking for a way to force the examiner to treat an intended use as a claim limitation.

The office is pushing, and very hard, to make examiners treat ~90% of limitations in the computing arts to invoke 112 6th.

112 6th creates so many f'ing headaches for everyone involved, however, and we'd be better off if it was nixed all together.

[NJ Patent1]

Dear All: 
     Wow, this string - and 'JustAnother's' hypos - in respons to Alistar's - question (remember the original question presented ?) have taken-on a whole new life. Not a bad thing.  It's interesting. 

      'JustAnother' tossed-out 6 hypothetical claim elements that are (I presume) part of a larger claim, like rts's hypo.  Before I even get to 112 6th, I note that ALL "sandwich holders" are somehow adapted to, configured to, designed to, or in fact do, hold sandwiches. That's what sandwich holders do.   Before I get to para. 6, I stop at para 2.  How adapted?  How configured?  Depending on knowledge in the art, it may or may not not matter.  I've used such language but confess that I see some indefiniteness in it.  Perhaps sandwich holders are just old elements performing their known function to produce a predictable result.  Unfortunately, we don't have a hypothetical spec to go along with the hypothetical claims to guide our claim construction. 

     The CAFC has told us that there is no "magic language" for invoking 112 para 6 and, in my view, the developing position of the USPTO, as I understand it from 'JustAnother's' post, is not absurd.  What is the difference between a "sandwich holder adapted to hold a sandwich" and "a means for holding a sandwich"?  Arguably semantics.  But I still see para 2 before I see para 6.  If the Office is going to import limitations from the spec (via invocation of para 6) instead of interpreting the claims in light of the spec as understood by the PHOSA, it could lead to another intersting APA case at the Fed. Cir. 

    Anyhow, thanks to all for some good reads! 

[khazzah]

The MPEP hasn't been updated with the new 112 6th guidelines.
Barring certain exceptions, limitations of the form [adjective][noun][prepositional phrase][functional language] invoke 112 6th.

Ah, I missed that. You were telling us how claims are interpreted under the new guidelines.

And I don't see how my comment wasn't helpful, as the OP was looking for a way to force the examiner to treat an intended use as a claim limitation.

Apologies. I thought you were skipping the analysis, when instead you were analyzing -- under the new guidelines.

So you're saying the OP can get patentable weight for his intended-use limitation by telling the Examiner that the element falls under 11P6. Right?

Interesting idea ... but I'd think very carefully before making a statement on record that my element invokes 112P6, since the claim scope under 112P6 will be significantly more limited as compared to functional-language-without-112P6. 

[khazzah]

The MPEP hasn't been updated with the new 112 6th guidelines.

Barring certain exceptions, limitations of the form [adjective][noun][prepositional phrase][functional language] invoke 112 6th.

Wait a minute ... I assumed you were talking about the Supplemental Guidelines for Section 112, from earlier this year. Are you saying instead that there are newer guidelines (not yet public?) which are specific to 112P6?


Because I just looked at the Feb 2011 Guidelines and I don't see anything corresponding to what you said above. Instead, I see the same old stuff about "means for" triggering a rebuttable presumption that 112P6 applies and lack of "means for" triggering a rebuttable presumption that 112P6 does not apply.

[NJ Patent1]

That was my understanding of the post, why I typed "developing position".  I don't see it in the guideleines either. 

Concerning statement of intended use ("for ...") in a preamble, one doesen't even get to 112 para 6 untill one establishes that the recitation is, indeed "an element in a claim".  It's a threshold question.