Patent Office Actions

When pursuing patent protection for your innovation, encountering Patent Office Actions rejections under 35 U.S.C. §102 (anticipation) and §103 (obviousness) is a common challenge. These rejections are the primary substantive hurdles in the patent examination process, accounting for the majority of all rejected claims.

Understanding 102 Rejections (Anticipation)

A 102 rejection asserts that your claimed invention is not novel because it is “anticipated” by prior art—meaning all elements of your claim are found in a single prior art reference. Under 35 U.S.C. §102, an invention fails the novelty requirement if it was patented, described in a printed publication, in public use, on sale, or otherwise available to the public before the effective filing date.

Anticipation requires that a single prior art reference disclose every element of the claimed invention, either explicitly or inherently. This standard is often referred to as the “all elements rule.” For a proper 102 rejection:

• The reference must disclose all claimed elements
• The elements must be arranged as in the claim
• The disclosure must be enabling (provide sufficient information for a PHOSITA to make and use the invention)
• The reference must constitute valid prior art under §102

Strategies for Overcoming  102 Rejections 

• Identify Missing Elements: Carefully analyze whether the cited reference truly discloses each and every element of your claim. If even one element is missing, the anticipation rejection is improper. Be particularly attentive to transitional phrases (“comprising,” “consisting of,” “consisting essentially of”) as they define the claim’s scope.
• Argue Different Arrangements or Configurations: Even if all elements appear to be present, argue that they exist in a different arrangement, connection, or configuration than your claimed invention. The prior art must show the elements “arranged as in the claim.”
• Challenge Inherency Arguments: Examiners sometimes argue certain features are “inherently” disclosed. Such arguments require that the missing feature necessarily (not just possibly) exists in the prior art. Per MPEP §2112, “The fact that a certain result or characteristic may occur or be present in the prior art is not sufficient to establish inherency.” The missing element must inevitably result from the disclosed process.
• Attack Reference Enablement: Question whether the cited reference provides enough information for a PHOSITA to make and use the invention without undue experimentation. Non-enabling references cannot anticipate.
• Invoke Exceptions: For 102(a)(1) rejections, determine if any exceptions apply, such as:
  
  
  • The disclosure was made by the inventor
  • The disclosed subject matter was obtained from the inventor
  • The disclosure was made within the 1-year grace period
• Swear Behind (Pre-AIA Applications): For applications filed before March 16, 2013, consider filing an affidavit under 37 CFR 1.131 to establish invention prior to the reference date.
• Amend with Precision: If a legitimate anticipation issue exists, consider targeted claim amendments that add elements or clarify relationships while preserving the broadest reasonable scope of protection. Focus on adding features that differentiate from the prior art rather than merely narrowing existing elements.
• Utilize Declarations: Expert declarations can be valuable to explain why the examiner’s interpretation of the prior art is technically incorrect. These can address technical nuances that may not be apparent to the examiner or establish why a PHOSITA would interpret the reference differently.
• Challenge Reference Date/Status: Verify that the cited reference qualifies as prior art under the correct subsection of §102. Check publication dates, effective filing dates, and inventorship to ensure the reference is properly applied.
• Request Examiner Interview: A face-to-face or telephone interview can help clarify misunderstandings about the prior art or your invention, potentially leading to a withdrawal of the rejection.

Understanding 103 Rejections (Obviousness)

A 103 rejection contends that even if your invention is not identically disclosed in a single reference, the differences between your claimed invention and the prior art would have been obvious to a person of ordinary skill in the art.

Strategies for Overcoming  103 Rejections

• Challenge the Combination: Question whether there is a proper motivation to combine the references. The examiner must articulate a valid reason why one skilled in the art would combine the references in the manner claimed.
• Identify Teaching Away: Highlight aspects of the cited references that discourage or teach away from the claimed combination or approach.
• Demonstrate Unexpected Results: Provide evidence of unexpected results, synergistic effects, or other secondary considerations of non-obviousness (commercial success, long-felt but unsolved need, failure of others).
• Attack Improper Hindsight: Argue that the examiner is using your invention as a blueprint to piece together disparate elements from multiple references—a form of improper hindsight reasoning.
• Challenge the Level of Skill: Question whether the examiner’s assessment of the level of ordinary skill in the art is appropriate based on the complexity of the technology.

Practical Example:

Consider a rejection where:

• Reference A discloses elements 1, 2, and 3
• Reference B discloses elements 4 and 5
• Your claim includes elements 1-5 plus a specific interaction between elements 3 and 4

Effective Response Approach:

• Emphasize that neither reference discusses the specific interaction between elements 3 and 4
• Explain why this interaction is not merely a predictable use of prior art elements
• Highlight any technical challenges or conventional wisdom that would have discouraged the combination
• Provide data showing improved performance or unexpected benefits from the claimed interaction

Strategic Claim Amendments

When direct arguments are insufficient, strategic claim amendments can overcome rejections while preserving valuable scope:

1. Add Qualifying Language: Instead of narrowing with additional elements, consider qualifying existing elements with functional language or specific relationships.
2. Incorporate Dependent Claims: If a dependent claim includes allowable subject matter, consider incorporating it into the independent claim while canceling other dependent claims to streamline prosecution.
3. Use Examiner Interviews: Schedule an interview to discuss potential amendments before formal submission, potentially saving time and prosecution costs.
4. Consider Means-Plus-Function: In some cases, using means-plus-function language under 35 U.S.C. §112(f) can provide appropriate scope while overcoming the prior art

Overcoming 102 and 103 rejections requires a strategic approach that combines technical understanding, legal knowledge, and persuasive argumentation. By thoroughly analyzing the prior art, identifying vulnerabilities in the rejection, and presenting strategic amendments when necessary, patent applicants can navigate these common obstacles to secure valuable intellectual property protection.

Remember that patience and persistence are essential—many groundbreaking patents faced multiple rejections before eventually being granted. Working closely with experienced patent counsel can significantly improve your chances of success when responding to these challenging rejections.