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Patent Application Prosecution

Our office assists inventors in obtaining patent protection. Often, clients come to us only after their initial filing is rejected. We have helped many clients to overcome office actions and other rejections at the Patent Office.

Patent applications are rejected for a variety of reasons. Claims are rejected for lack of novelty and utility and for obviousness. These rejections are based on the patent statute, specifically 35 U.S.C. §§ 101, 102, and 103. Claims can also be rejected for failure of enablement or written description requirements set forth in § 112.

Rejections can either be non-final or final. The first Office Action from an examiner will always be a non-final rejection. The applicant must argue his case for why the examiner is mistaken or offer amendments to further limit the scope of the claims.

If upon further examination the examiner feels that the applicant cannot overcome the rejection, the examiner can issue a final rejection. A final rejection is meant to close prosecution on the application, but there are still options that the applicant can explore to overcome a final rejection. The applicant can either appeal to the Board of Patent Appeals and Interferences or file an amendment cancelling each rejected claim.

What is an office action?

An Office Action is a letter from an examining attorney setting forth the legal status of a patent application. In this letter, the examiner will itemize every objection or rejection that he or she finds in the application. After an the examiner issues an Office Action, the applicant has three months to respond, or up to six months if the proper extensions and fees are filed.

What is section 102?

Section 102 is a part of the Patent Statute (35 U.S.C. § 102). This section of the statute contains specific provisions relating to the novelty of an invention. For instance, § 102a limits novelty when an invention was used in the U.S. or if it was disclosed in a printed publication anywhere in the world before invention by the applicant.

Section 102b contains two of the statutory bars to patent rights, namely the on sale and public use bars. These bars apply if the invention was on sale or used publicly more than a year before filing a patent application. In total, there are seven provisions with numerous subparts and exceptions in § 102. However, understanding § 102 can be made simpler by keeping in mind that the concept behind all § 102 provisions is enriching the public domain of knowledge. The provisions accomplish this goal by encouraging prompt disclosure of inventions and by keeping inventions already used by the public from leaving the public domain.

What is an anticipation rejection?

Anticipation refers the ability of a prior art reference to teach all of the claimed elements of the applicant’s invention. Anticipation stems from § 102 of the statute. Specifically §§ 102(a),(b),(e), and (g). These provisions set forth the requirements for a prior art reference to anticipate an application. In order to anticipate, the prior art reference must contain within the four corners of the document every element or limitation, either explicitly or inherently, stated in the patent application.

What is section 103?

Section 103 is a part of the Patent Statute (35 U.S.C. § 103). This section of the statute contains the statutory requirement that an invention be nonobvious to a person having ordinary skill in the art.

What is an obviousness rejection?

As stated above, the requirement that an invention be nonobvious is statutorily mandated. An examiner will reject claims in a patent application that the analogous art suggests may be obvious to a person having ordinary skill in the art (PHOSITA). There are two ways that an obviousness rejection can arise:

Combining prior art references: If your application claimed elements A, B, C, and D, the examiner can combine an application claiming A and B with an application claiming C and D so long as a PHOSITA might attempt to do so.
An obvious improvement to a single prior art reference: An application can claim A, B, C, and D and a prior art reference contains only A, B, and C. The examiner might say that D was an obvious addition to the old invention based on advances in the art.
In order for an examiner to combine prior art references, it must have been reasonable that a PHOSITA might have done so as well. The Supreme Court in KSR v. Teleflex emphasized that there can be several different reasons that a PHOSITA might combine references. There could have been some teaching, suggestion, or motivation in a prior patent that caused the PHOSITA to look to another field to solve the problem. There could also be a finite number of solutions to which the examiner would say that the improvement was obvious to try.

If the examiner uses a single reference, then the examiner will consider four factors set out by the Supreme Court in Graham v. John Deere: (1) the level of skill in the art; (2) the scope and content of the prior art; (3) the differences between the claimed invention and the prior art; and (4) any secondary considerations. Generally these obviousness rejections arise when an examiner finds a very similar prior art reference but cannot use it under § 102. The examiner might claim that given the advances in the art, especially if the reference is relatively old, the applicant’s invention would be obvious to a PHOSITA. The best way to get around this type of rejection is to emphasis the differences in the applicant’s invention and the prior art reference. Secondary considerations can also be an important factor like the presence of a long-felt but unmet public desire for the improvement or commercial success of the applicant’s invention

What is analogous art?

An examiner cannot combine or use any references that he can find in order to reject the applicant’s invention as obvious. The references must be analogous to the art practiced in the invention. Typically, an examiner will look to prior art from within the same field of endeavor as the invention. The examiner will also look to reasonably related fields of endeavor in which the same problem is addressed.

For example, if the invention was a drinking glass, the examiner will look at other drinking glass applications. He may also look at mug art or water bottle art. The examiner might even reasonably be able to consult bowl art, but he probably could not go so far as bucket art. The examiner should consider where a PHOSITA would look in determining how to solve the problem remedied by the applicant’s invention.

What is a restriction requirement?

Sometimes an applicant may have an inventive concept that can apply to more than one invention. If these inventions are independent of each other, the examiner may require the applicant to restrict prosecution of the application to a single invention. At this point the applicant will file an election stating which invention he will continue to prosecute. The unelected invention can still be prosecuted in a divisional application.

There are two reasons underlying restriction requirements: burden on the examiner and frustrating fee collection. The USPTO is currently extremely backlogged with applications, which means the examiner gets only a few hours to review an application and issue a response. If an application were to contain two inventions, the examiner would have to spend that much more time reviewing it. So restriction requirements are a way for the USPTO to save the examiner’s time and ensure that enough funds are generated to maintain a large pool of examiners.

What does ‘enablement’ mean?

Enablement is a statutorily prescribed necessity for a patent grant. The requirement comes from § 112 of the Patent Act (35 U.S.C. § 112). For an invention to be enabled, a PHOSITA must be able to practice the invention without undue experimentation. Thus, enablement is relative to the field of the invention. Enablement issues often arise when the claims are broad. Inventors may try claiming a genus when they have only enabled a few of the species. For instance, relatively simple mechanical inventions can generally be enabled by providing a single embodiment.

On the other hand, complex chemical inventions often require a larger disclosure to be enabled. The patent system is essentially an incentive system for inventors to disclose their inventions in exchange for a limited monopoly on making, using, and selling the invention. In order for this quid pro quo to work, the inventor must adequately describe to the public how to make and use the invention. That way at the end of the twenty year term members of the public can realize the benefit of the patent bargain.

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