A distinction predicated on merely on application to a particular class of users is likely to be found non-distinguishing intended use.
Background / Facts: The application on appeal here from the PTAB is directed to automated methods of identifying relevant prior art references within a database for disclosure to the PTO in connection with a given patent application. Essentially, it is a computer program that searches an applicant’s collection of prior art for documents that match the class/subclass of a given application, and recommends disclosing those documents to the PTO. In this regard, the claims recite identifying prior art known to the “applicant,” whereas the applied references disclose more generic prior art identification by any “user” of their system.
Issue(s): Whether the claim term “applicant” is included within the term “user.”
Holding(s): Yes. “We agree with the Board that [applicant] Yeager’s distinction between ‘applicant’ and ‘user’ is one without a difference.” At most, the court agreed with the PTO’s finding that facilitating a patent applicant’s discharge of the duty of disclosure was merely a description of intended use.