Overcome Rejections
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| Overcome Rej. » |
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This is the 10.2019 version. |
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| Guidebook App I » |  |
Prior Art Rejections |
| MPEP 700 » |  |
Download MPEP Chapter 700 |
| MPEP 2100 » | |
Download MPEP Chapter 2100 |
| Guidebook App II » | |
35 U.S.C. 102 Rejections |
| Guidebook App IV » | |
Disqualify Prior Art |
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In establishing a disclosure, applicant may rely not only on the description and drawing as filed but also on the original claims if their content justifies it.
Where subject matter not shown in the drawing or described in the description is claimed in the application as filed, and such original claim itself constitutes a clear disclosure of this subject matter, then the claim should be treated on its merits, and requirement made to amend the drawing and description to show this subject matter.
This section outlines in detail the rules of dependent claims including multiple dependent claims. It gives examples of acceptable multiple dependent claims and examples of unacceptable multiple dependent claims. There is also a brief discussion of restriction practice, how multiple dependent claims are handled at the PTO (by both the Technology Center Staff and Examiners).
In addition, this section includes examples of claims that will be objected to and the current practice where each embodiment of each claim must be treated on an individual basis. Also included is a section on calculating fees for multiple dependent claims as well as an example.
The treatment of improper dependent claims is discussed including infringement tests, claim form and arrangement, and rejection and objection.
Drawings are covered in this section. A brief discussion on the receipt of drawings after the filing date, handling of drawing requirements under the first sentence and second sentence of 35 U.S.C. 113 are covered. In addition, the standards for drawings is outlined along with definitions of important terms.
Rules for black and white photographs, color drawings or color photographs are covered. Unless a petition is filed and granted, color drawings or color photographs will not be accepted in a utility or design patent application. Lastly, drawing symbols may be used where appropriate.
This section discusses the acceptability of drawings. In instances where the drawing is such that the prosecution can be carried on without the corrections, applicant is informed of the reasons why the drawing is objected to in an examiner’s action, and that the drawing is admitted for examination purposes only.
This section covers the differences between rejections and objections. The practical difference between a rejection and an objection is that a rejection, involving the merits of the claim, is subject to Review by the Patent Trial and Appeal Board, while an objection, if persisted, may be Reviewed only by way of petition to the Director of the USPTO.
In all applications, an applicant may overcome a 35 U.S.C. 102 rejection by persuasively arguing that the claims are patentably distinguishable from the prior art, or by amending the claims to patentably distinguish over the prior art. Additional ways available to overcome a rejection based on 35 U.S.C. 102 prior art depend on whether or not any claim in the application being examined is subject to the first inventor to file provisions of the AIA.
This section covers a provisional rejections under 35 U.S.C. 103 using provisional prior art under pre-AIA 35 U.S.C. 102(e). There is an overview of the historical background including a discussion of the CREATE Act.
Provisional obviousness rejections are discussed in detail. Where two applications of different inventive entities are copending, not published, and the filing dates differ, a provisional rejection under pre-AIA 35 U.S.C. 103(a) based on provisional prior art under pre-AIA 35 U.S.C. 102(e) should be made in the later filed application unless the application has been excluded under pre-AIA 35 U.S.C. 103(c). Otherwise the confidential status of unpublished application, or any part thereof, must be maintained.
In addition, so long as the applications have at least one inventor in common and the other requirements are met, the Office will permit a claim for 35 U.S.C. 120 benefit without any additional submissions or notifications from applicants regarding inventorship differences.
This section covers rejections under pre-AIA 35 U.S.C. 103(a) using prior art under pre-AIA 35 U.S.C. 102(e), (f), or (g). There is a discussion on common ownership or assignee prior art exclusion under pre-AIA 35 U.S.C. 103(c) as well as joint research agreement disqualification under pre-AIA 35 U.S.C. 103(c) by the CREATE Act.
This section provides a brief introduction to how rejections not based on prior art are handled through the Office.
This section covers how new matter filed in an application will lead to a rejection.
Any question as to prematureness of a final rejection should be raised, if at all, while the application is still pending before the primary examiner.
If an application becomes abandoned it is essentially closed for further prosecution. This can happen for a number of reasons; the applicant or patent attorney may formally abandon the application or the applicant may accidentally abandon the application. This occurs when the applicant does not take the appropriate action within the allotted timeframe.
The Office has strict policies for petitions relating to the revival of an abandoned application. In order to revive an application that was abandoned due to a lack of response by the applicant, a petition may be sent in only when the delay in reply was unavoidable or unintentional. This section covers the revival of an abandoned application, unavoidable delay under 37 C.F.R. 1.137(a), and unintentional delay under 37 C.F.R. 1.137(b). The section includes a comparison and contrast of unavoidable delay/unintentional delay.
In some cases, revival of an abandoned application may require a terminal disclaimer. A terminal disclaimer will result in a shorter patent term than that of a regular patent term.
This section also covers request for reconsideration, a summary of petitions relating to abandonment, and specific cases.
This section outlines how a reply by an applicant or the patent owner to a non-final Office action must be fully responsive.
In the consideration of claims in an amended case where no attempt is made to point out the patentable novelty, the claims should not be allowed.
This section discusses swearing behind a reference with an affidavit or declaration under 37 C.F.R. 1.131(a). Swearing back, (also called an affidavit or declaration under 37 C.F.R. 1.131) may be used to overcome rejections where the prior art used to establish the rejection was not by “another”, but filed by the same inventor.
This section covers situations where 37 C.F.R. 1.131 affidavits or declarations can and cannot be used and the reference date to be overcome.
The affidavit or declaration under 37 CFR 1.131(a) must show as much as the minimum disclosure required by a patent specification to furnish support for a generic claim.
For applications subject to pre-AIA 35 U.S.C. 102, when the reference in question is a noncommonly owned U.S. patent or patent application publication claiming the same invention as applicant and its publication date is less than 1 year prior to the presentation of claims to that invention in the application being examined, applicant’s remedy, if any, must be by way of 37 CFR 41.202 instead of 37 CFR 1.131(a).
This section discusses 37 C.F.R. 1.132, affidavits or declarations traversing rejections or objections.
This section explains that evidence of unexpected and expected properties must be weighed. In addition, expected beneficial results are evidence of obviousness.
This section provides specific details on double patenting. Essentially, double patenting seeks to prevent the unjustified extension of patent rights beyond the term of a patent. This section covers when double patenting is possible along with the requirements of double patenting rejections. Obviousness type nonstatutory double patenting is also discussed including two-way obviousness.
This section also discusses disclaimers which may be used to disclaim or dedicate part of a patent term. The topics discussed include terms, terminal disclaimers, statutory double patenting rejections, and nonstatutory rejections.
This section references 37 C.F.R. 1.181 petitions to the Director of the USPTO. It also provides a brief overview of petitions to the Director. For instance, the mere filing of a petition will not stay the period for replying to an examiner’s action, nor act as a stay of other proceedings. The applicant will need to file the petition and any reply within the time to reply or successfully file an extension of time.
This section describes the principles behind rejections based on utility (whether or not an invention has any use) and obviousness based on one or more prior art references. In addition, there is a discussion on how to interpret claims within the scope of these utility or obviousness rejections.
Useful inventions have a practical utility or specific utility without having to pursue further research to identify or reasonably confirm it. An applicant must identify why an invention is useful (unless it has a well-established utility), otherwise the claimed invention will be deficient under 35 U.S.C. 101 and 35 U.S.C. 112 first paragraph.
This section discusses procedural considerations related to rejections for lack of utility. It includes a discussion of inoperative inventions which includes those that do not operate to produce the results claimed by the patent applicant. In addition, it discusses credibility which must be believable to a person of ordinary skill in the art based on the totality of evidence and the reasoning provided. Lastly, it covers a prima facie showing, which must explain why a person of ordinary skill in the art would conclude it is more likely than not that asserted utility is not credible.
The determination of whether a preamble limits a claim is made on a case-by-case basis in light of the facts in each case; there is no litmus test defining when a preamble limits the scope of a claim.
The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. This section covers the burden of proof for a rejection based on inherency.
This includes that something old does not become patentable upon the discovery of a new property. In addition, the inherent feature need not be recognized at the time of the invention. In addition there is a brief discussion how a rejection under 35 U.S.C. 102/103 can be made when the prior art product seems to be identical except that the prior art is silent as to an inherent characteristic. Finally, this section states that the examiner must provide rationale or evidence tending to show inherency.
Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself.
The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.
This section covers the 'on sale' bar of pre-AIA 35 U.S.C. 102(b). The on-sale bar is triggered if the invention is both the subject of a commercial offer for sale not primarily for experimental purposes and is ready for patenting. This section discusses the meaning of 'sale', offers for sale, sale by inventor, assignee or others associated with the inventor in the course of business, and sales by independent third parties.
This section explains how a use or sale that was experimental will not lead to a bar under pre-AIA 35 U.S.C. 102(b).
This section discusses consideration of applicant's rebuttal arguments. Rebuttal evidence and arguments can be presented in the specification, by counsel, or by way of an affidavit or declaration under 37 CFR 1.132. The types of evidence that may be used is covered in detail. An argument does not replace evidence where evidence is necessary.
This section also covers making certain types of arguments including arguing against references individually, arguing that prior art devices are not physically combinable, and many more argument types.
This section covers the topic of numerical ranges and amounts limitations. Generally, the recitation of specific numerical ranges in a claim does not raise an issue of whether a claim is definite. Use of a narrow numerical range that falls within a broader range in the same claim may render the claim indefinite when the boundaries of the claim are not discernible.
This section sets forth guidelines for the examination of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, “means or step plus function” limitations in a claim. It covers the steps for determining whether a claim limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. A description is necessary to support a claim limitation which invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
This section covers how to determine 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph compliance when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. This section also covers how to determine whether 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph support exists.
This section discusses the actions that take place after an interference. Once the interference is terminated, jurisdiction will return to the examiner. If further action is recommended in the application, then the examiner will need to reopen prosecution. If no further action is recommended in the application, then the examiner may reopen prosecution (if necessary, but not required) for any claims left standing. Further details including how added or amended claims are handled and an explanation of no interference-in-fact is given. This essentially means no interference is needed.
