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What are the different types of patent rejections?



Navigating the patent application process can be complex, and facing rejections is a common part of the journey. While prosecuting a patent application, the USPTO may issue an office action that includes one or more rejections of the pending claims.


Moreover, some rejections may form the basis for invalidating an existing patent before the PTAB. Understanding the different types of rejection can help you respond effectively to an office action and protect your existing patent against validity challenges.


These different types of rejections may include nonstatutory subject matter (Section 101), double patenting (Section 101), non-enablement (Section 112(a)), indefiniteness (Section 112(b)), lack of novelty (Section 102), and obviousness (Section 103).


Section 101 nonstatutory subject matter rejection

Under Section 101 of the Patent Act, a nonstatutory subject matter rejection asserts that a claim recites subject matter that is not eligible for patent protection, irrespective of its novelty. Section 101 states that patents may be granted for any new and useful process, machine, manufacture, or composition of matter or any new and useful improvement thereof. Section 101 further states that laws of nature, natural phenomena, and abstract ideas are excluded from obtaining patent protection. Accordingly, Section 101 forms the basis for determining what types of inventions can receive patent protection. 


For example, an Office Action issued by the USPTO may state something similar to "Claims 1-20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., abstract idea) without 'significantly more.'" In response, the applicant may amend the independent claims based on the specification and then argue that the amended claims are directed to significantly more than a judicial exception.


To discuss possible responses to a pending nonstatutory subject matter rejection, contact TCP Law at info@tcplawfirm.com or John Laurence by phone at 917-612-1059.


Section 101 double patenting rejection

Under Section 101 of the Patent Act, a statutory double patenting rejection occurs when an applicant files multiple patents covering the same invention or for a non-distinct variation of an already patented invention. There are two variations of this rejection, "same invention" double patenting, which targets identical inventions in different patents, and "obviousness-type" double patenting, addressing situations where the later invention is not identically disclosed but is deemed an obvious variation of the earlier invention. This rejection aims to prevent the unjust extension of patent rights beyond the statutory term and ensure that the public can freely use the invention post-patent expiration.


For example, an Office Action issued by the USPTO may state something similar to "Claims 1 and 17 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over at least claim 1 and 7 of copending Application No. 12345678." In response, the applicant may file a terminal disclaimer to align the expiration dates of the patents.


To discuss possible responses to a pending double patenting rejection, contact TCP Law at info@tcplawfirm.com or John Laurence by phone at 917-612-1059.


Section 112(a) non-enablement rejection

Under Section 112(a) of the Patent Act, a non-enablement rejection occurs when an application does not adequately describe how to make and use the claimed invention. Specifically, a non-enablement rejection asserts that a specification does not define the invention sufficiently to enable a person of ordinary skill in the art to practice the invention without undue experimentation. Several factors are considered when determining whether an application disclosure is enabled and whether undue experimentation is required, these factors including (a) the breadth of the claims, (b) the nature of the invention, (c) the state of the prior art, (d) the level of one of ordinary skill, (e) the level of predictability in the art, (f) the amount of direction provided by the inventor, (g) the existence of working examples, and (h) the quantity of experimentation needed to make or use the invention based on the content of the disclosure. The enablement requirement ensures that the public can benefit from the invention once the patent expires, maintaining a balance between granting patent rights and contributing to public knowledge. To overcome a non-enablement rejection, the applicant must argue past the rejection, as the specification may not be amended after the application has been filed.


To discuss possible responses to a non-enablement rejection, contact TCP Law at info@tcplawfirm.com or John Laurence by phone at 917-612-1059.



Section 112(b) indefiniteness rejection

Under Section 112(b) of the Patent Act, an indefiniteness rejection arises when the claims are not clear enough for a person of ordinary skill in the art to understand the scope of the claimed invention. Section 112(b) requires that the specification conclude with one or more claims that particularly point out and distinctly claim the subject matter that the inventor or joint inventors regard as the invention. The USPTO has interpreted Section 112(b) as imposing two requirements: 

  • (A) the claims must set forth the subject matter that the inventor or a joint inventor regards as the invention and

  • (B) the claims must particularly point out and distinctly define the metes and bounds of the subject matter to be protected by the patent grant.

These requirements ensure that the public is informed about the boundaries of what is patented and what is free to use. To overcome an indefinite rejection, the applicant may amend the claims using language supported in the specification to define the parameters of the invention more clearly.


To discuss possible responses to an indefiniteness rejection, contact TCP Law at info@tcplawfirm.com or John Laurence by phone at 917-612-1059.


Section 102 lack of novelty rejection

Under Section 102, a lack of novelty rejection in a patent application occurs when the claimed invention is not new, meaning it has been disclosed to the public prior to the application's filing date. This prior art may be a previous patent, a published article, a product on the market, or some other form of public disclosure. 


For example, an Office Action issued by the USPTO may state something similar to "Claims 1-20 are rejected under 35 U.S.C. § 103 as being unpatentable over Prior art reference (Application No. 12345678)." In response, an applicant may amend the claims to highlight novel aspects not disclosed in the prior art or argue how the claimed invention differs from the cited prior art.


To discuss possible responses to a pending lack-of-novelty rejection, contact TCP Law at info@tcplawfirm.com or John Laurence by phone at 917-612-1059.


Section 103 obviousness rejection

Under Section 103 of the Patent Act, an obviousness rejection asserts that the elements of an invention or their combination thereof would be obvious to a person of ordinary skill in the art based on one or more cited prior art references. The factual inquiries for establishing a background for determining obviousness are: (1) determining the scope and contents of the prior art, (2) ascertaining the differences between the prior art and the claims at issue, (3) resolving the level of ordinary skill in the pertinent art, and (4) considering objective evidence present in the application indicating obviousness to nonobviousness. Accordingly, a rejection based on obviousness challenges the inventive step requirement for patents, asserting that the claimed invention lacks the necessary novelty.


For example, an Office Action issued by the USPTO may state something similar to "Claims 1-20 are rejected under 35 U.S.C. § 103 as being unpatentable over Prior art reference No. 1 (Application No. 12345678) in view of Prior Art Reference No. 2 (US Pat No. 12345678)." In response, the applicant may argue past the obviousness rejection or amend the claims based on the specification to add elements not taught in the cited references. Possible arguments may include the fact that the combination of cited prior art references does not disclose all the elements of the claimed invention or that the person of ordinary skill in the art would not have a reason to combine the prior art references.


To discuss possible responses to a pending obviousness rejection, contact TCP Law at info@tcplawfirm.com or John Laurence by phone at 917-612-1059.

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John Laurence TCP Law, Trademark Patent Copyright Lawyer

TCP Law focuses on helping individuals and businesses develop, secure, and enforce their intellectual property rights.

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