Let’s go into some detail in how the prosecution process works:
REJECTIONS VS. OBJECTIONS
In Office Actions, there are two seemingly similar terms used by patent examiners when they are refusing to allow patent claims. Claims can either be “rejected” or they can be “objected” to, and in some cases a claim can both be rejected and objected to for the same reason.
Definitions – A refusal to grant claims because the subject matter as claimed is considered unpatentable is called a “rejection.”
The term “Rejection ” is used by the patent examiner when the substance of the patent claims being sought is deemed to be unallowable under US Laws 35 U.S.C. . 101, 102, 103 and/or 112.
If the form of the claim (as distinguished from its substance) is improper, an “objection” is made.
A difference between between a rejection and an objection is that a rejection involves the merits of the claim and is subject to review by the Patent Trial and Appeal Board (PTAB), while, an objection involves the form of the claims and if persisted, may be reviewed only petition to the Director of the USPTO.
To say it another way, rejections relate to the law (i.e., Title 35 of the U.S. Code) and objections relate to the rules (i.e., Title 37 of the Code of Federal Regulations). There is overlap between the law and the rules so sometimes you will see an objection and a rejection for the same reason.
REJECTIONS VS. OBJECTIONS Cont’d
The first time the applicant will substantively hear from the Patent Office will be when a First Office Action on the Merits (FOAM) is received.
Most likely all claims will be disallowed. Refusing to allow all the claims does not mean the patent examiner has rejected the invention.
The term Rejection and Objection may be used but it is not the invention that is being rejected or objected. Rather, it is the claims that are being rejected or objected to.
An objection or a rejection will need to be fixed in order to get a notice of allowance from the patent examiner, which cannot happen until only allowed claims are present in the application.
REASONS FOR NON ALLOWANCE
Lets look at some of the reasons why claims will not be allowed in an office action
1)Restriction – A restriction is not really a rejection but any inventor is entitled to one patent per invention. When there are two or more inventions in one application, the examiner will restrict it. This means that we have to proceed with one of the inventions and we can file divisionals for the other inventions.
2)Non-patentable subject matter – An inventor can get a patent for any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof. You can’t get a patent for subject matter that the USPTO considers as being directed to non patentable subject matter. These are laws of nature, physical phenomena, abstract ideas. So, a new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter. Likewise, Einstein could not patent his celebrated law that E=mc2; nor could Newton have patented the law of gravity.
3)Existing patent or invention – An inventor can get a patent for something that’s new. If there is an existing application or the idea has been patented, or it’s appeared in a prior publication at anytime, this can invalidate some or everything that is being claimed. What you typically see is that USPTO may say some or all claims are “anticipated under Section 102” and then cite existing patents. Section 102 rejections are sometimes difficult to overcome but as long as the prior art doesn’t teach each and every single limitation in a claim, it can be overcome by merely pointing out what it is that it doesn’t teach.
4)Obviousness – An inventor can get a patent if the patent is not trivial. As in if it is non obvious over any prior art. Most rejections fall under this class. What the rejection means is that the examiner is saying that it would have been obvious to develop your invention or product if you had known about the references cited because you could have tweaked the references in order to obtain yours.
Rejections in this class can mostly be argued with the examiner. For example you can make a Lack of motivation to combine prior art argumment. For example, if a prior art fails to disclose the relative success of combining elements to arrive at the invention, you can argue that there wasn’t any reason a person of ordinary skill in the related art would conclude that the elements should be combined to obtain the invention.
5)Inadequate disclosure or improper claims language – The Examiner expects the specification to contain a written description of the invention, and of the manner and process of making and using it, in a full, clear, concise, and exact terms as to enable any person skilled in the art to make the invention. If the specification doesn’t provide this disclosure, then a rejection will be received.
Improper claim language is a common rejection and the USPTO is very picky about it. You get this rejection when you use incorrect grammar and they are easy to fix. specifically, antecedent-based language. For example, in a patent application for a dental dispenser if we say in the claims that the dispenser is “a device, having two plungers, with said valve being disposed in front of the plungers.” but never mentioned valve before that clause, you can’t write “said valve” in the first reference. Technical problems under this category are relatively easy to correct in the reply.
REQUIREMENTS FOR PATENTABILITY
Many People normally wrongly assume that if a patent falls under an eligible subject matter (1), then a patent should be obtained. However that is not correct. The subject should be :
1.Patent Eligible
2.Useful (Utility)
3.New (Novelty)
4.Non-Obvious and
5.Described such that people skilled in the technology field can understand, make and use the invention without too much experimentation.
And these are set forth in Statutes (Law) describing the requirements for Patentability. Contact Unitech Labs to discuss your invention and get opinions about the patentability of your invention.
