In patent prosecution, sometimes an examiner seems to sidestep well-crafted arguments by dismissing the technical benefits of a claimed feature simply because those benefits are not explicitly recited in the claim. Despite a thorough explanation of how a particular difference yields advantages over the prior art, an examiner may reduce the issue to a narrow literal interpretation, effectively “playing dumb” about the underlying technical rationale.

Consider the scenario where an applicant details a feature of the invention that distinguishes the cited art, and further produces tangible technical benefits—say, enhanced thermal stability or improved efficiency. The applicant explains how this benefit means that the difference from the cited art is one that matters, from a technical point of view. In response, the examiner points out that the claim language does not explicitly require the technical benefit, and thus deems it irrelevant to the determination of patentability. Of course the point the applicant was trying to make was not that the claim expressly recited the benefit. Nevertheless, the resulting stalemate can be frustrating.

A recent case at the PTAB illustrates this issue clearly. The case is Appeal 2025-000241 Application 15/727,487. The invention relates to a medical imaging system. The independent claim on appeal is as follows:

25. A total body imaging device comprising:
a housing having a front wall, two side walls, and a back wall;
a frame located within the housing;
a plurality of cameras mounted to the frame wherein the plurality of cameras comprise at least three cameras horizontally spaced along a horizontal row in relation to one another;
body positioning members mounted to the frame wherein the body positioning members include a first set of two opposing handles extending from the back wall and located below a second set of two opposing handles extending from the back wall; and
one or more video displays mounted to the frame.

The examiner cited prior art that did not actually disclose the claimed handle structure extending from the back wall. In the appeal, the applicant explained this distinction, and then went on to explain the benefit of the claimed feature. In particular, the applicant pointed out that by having all (each) of the handles extend from the back wall in this way, this “results in more reliable and repeatable posing by the user/patient when collecting images over time.” Further, the applicant argued that the claimed feature “facilitates the streamlined design of the total body imaging device and enables the small footprint of the device for use in medical offices.” In response, the examiner stated that these advantages were not recited in the claims, and would not be read into the claims.

On appeal, the PTAB recognized the disconnect:

Indeed, each (i.e., all) of the handles recited in claim 25 is explicitly recited as “extending from the back wall.” We find no impropriety in the fact that the Appellant is submitting arguments using language that slightly differs from that of the claim as there is no requirement that the precise language of the arguments must be identical to the claim language. As to the asserted benefits of the Appellant’s arrangement of the handles, the proper reading of the Appeal Brief is not that the Appellant is arguing that the claim requires such benefits, but is seeking to demonstrate the significance of the claim language and that there is a reason for the claimed arrangement.

To ensure that technical benefit arguments are given due consideration, consider the following strategies:

Clarify the Objective of Your Argument
Be explicit: state that your discussion of technical benefits is not an attempt to add limitations to the claim. Instead, it’s meant to illuminate the reasoning behind the claim’s language and demonstrate the significance of the claimed arrangement.
Anchor Your Argument in the Claim Language
Link your technical discussion directly to the language that appears in the claim. Rather than presenting the benefit as an extra limitation, explain how the claim results in the conditions necessary to achieve that benefit.
Consider whether there is a way to amend the claims to more expressly recite the advantage
Anticipate the examiner’s likely critique and try to head it off with an amendment. While there may be situations where such an amendment is not possible, there may be some cases where it works.

Patent prosecution can be as much about conveying the technical merit of an invention as about adhering to precise claim language. And while such arguments may be used against the patentee during enforcement, there can be no enforcement without allowed claims. When faced with examiners who use any excuse to dismiss technical benefit arguments, consider framing your rationale in a way that underscores the thought process behind the claim. By clearly defining the purpose of your argument, linking it directly to the claim language, and preemptively addressing objections, it may be possible to better communicate the innovation’s true value. But of course this strategy must be balanced with the understanding that anything you say can and will be used against you when trying to enforce your patent rights.