Office Actions: 35 USC 102 & 103 Patent Claim Rejections

If you’ve ever applied for a patent, you will most likely have the indistinct privilege of receiving an Office Action (once the PTO actually gets around to reviewing your application) containing rejections of the claims in your patent application. While it may be apparent that your claims are being rejected, the grounds of rejection may not be as clear.

A rejection under 35 USC 102 basically means that the examiner found a prior art reference that anticipates, or discloses, the elements recited in the rejected claims. Since a Section 102 rejection (also known as an “anticipation” rejection) must be based on a reference that discloses all the elements, or limitations, included in the rejected claims, this type of rejection is typically easier to overcome. By incorporating additional features in the claims, arguing the lack of certain features in the cited prior art, or doing a combination of both, it is possible to overcome a Section 102 rejection.

Rejections under 35 USC 103, known as obviousness type rejections, are more difficult to overcome. In these type of rejections, an examiner typically combines two or more prior art references to arrive at your claimed invention, the argument being that it would have been obvious to one of ordinary skill in the art to combine such references to come up with the features recited in the rejected claims. Obviousness type rejections are often subjective since it requires an examiner’s point of view as to which patents would be obvious to combine together.

Just as the initial decision of applying a Section 103 rejection is subjective, so is the decision to maintain such a rejection after reviewing an applicant’s amendment in response to the Office Action. This makes overcoming Section 103 decisions especially challenging. If applicable, one effective approach is to argue that not all the claimed limitations are found or suggested in the combination of references cited in the 103 rejection. Another approach is to argue that the references provide no suggestion or motivation for the cited combination. Though this argument is commonly employed, a convincing case can be made if, for example, one of the cited references teaches the exact opposite of what the other cited patent is teaching.

Secondary evidence of non-obviousness is another option: e.g., evidence of commercial success, copying, and more.