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How do I read an Office Action? 

The detailed description of the Office Action will follow the two form sheets described in Steps 1 and 2. 

Acknowledgement of Earlier Filings
or Response to Amendment

The Examiner will indicate which of your earlier filings he is reacting to (if any), and whether or not any amendments you made were accepted (entered). Make sure that you're on the same page here, and that he has received anything you've sent. The Examiner may also respond to any arguments you made in an earlier filing here, or sometimes in a "Response to Arguments" section at the end of the Action. 

Objections

The Examiner may object to the specification, drawings or claims for various reasons. Objections will usually be set forth before any rejections of the claims, in the sections below. 

Typically, claim objections deal only with very obvious errors - misspellings, duplicated or missing words, or incorrect punctuation. More involved problems will be dealt with in rejections under section 112 (see below). 

The Examiner will usually suggest corrections. You will be expected to overcome the objection by making corrections amending the application in your response to the office action.  

Claim Rejections

For the purpose of this discussion, let's assume that the application has the following claims:

1. A widget comprising:

a gronkheiser;

a portoflan armature having a distal end and a proxmial end, coupled to the gronkheiser; and

a frammis mounted upon the distal end of the portoflan armature.

2. The widget of claim 1, in which the fubar relay is cross polarized. 

3. The widget of claim 2, in which the end of the portoflan armature is arcuate. 

4. The widget of claim 1 further comprising the step of depolarizing the portoflan armature. 

5. The widget of claim 1, in which the frammis is mounted upon the proximal end. 

The claims might be rejected over one or more of the following sections of the Patent Law (volume 35 of the United States Code). To see the actual words of the law, click on the section number below:

Section 112 - claim formality:   

These rejections deal with matters of wording and formality, and are usually straightforward to deal with. You may need to change some wording, or reorganize the way a claim is written.

Here are a few terms you will see in section 112 rejections: 

  • "no antecedent basis" - a word is used for the first time in this claim, and it is not clear what this element is. "Fubar relay", in claim 2, has no antecedent basis, because there is no "fubar relay" in claim 1. This could be corrected either by adding the fubar relay to claim 1, or by amending claim 2 to read "The widget of claim 1 further comprising a cross-polarized fubar relay". 
  • "Vague and indefinite" - the Examiner thinks the claim, or some combination of the claims, is unclear or contradictory. In claim 3, for instance, which "end" are we talking about? Claim 5 contradicts claim 1 on which it depends - so which end is the frammis on - distal or proximal?  
  • "lack of support" - suppose the patent specification never used the word "gronkheiser", but always called this element a "furbelow". There would not be any support for the word "gronkheiser" in this claim. You can either change some of the "furbelows" in the specification to "gronkheisers", or vice versa. 
  • "improper claim form" - Claim 4 says it is based on the widget (apparatus) of claim 1, but the claim is to a step in a method, not an apparatus. It is improper to combine method and apparatus in this way, although it would be OK to say, "in which the portoflan armature is depolarized."
Section 101 - Not Patentable Subject Matter 

This rejection does not come up very often, except in computer or biotech applications. Section 101 reads:

"Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title."

A section 101 Subject Matter rejection means that the Examiner believes that the invention is either not one of the very broad classes of invention on which one can get a patent, or fits within one of the exceptions to patentability. That is, the Examiner believes the invention is not one of the following types of inventions:

  • Machines
  • Articles of manufacture
  • Methods (processes)
  • Compositions of matter (chemicals, cell lines, DNA sequences)
  • Improvements to any of the above.
  •  the appearance of useful objects. (design patent) or
  • an asexually reproduced plant (plant patent)

Or, he believes the invention is one of the following things

  • Purely mental processes
  • Mathematical algorithms or formulas (that is, just a formula without a real-world effect - a formula or algorithm may be claimed as part of a method, so long as there is an effect on the real world)
  • Arrangements of printed matter (Printed matter may be part of a patentable invention, but if the "invention" is just words, copyright protection is more appropriate)
  • Naturally occurring things (unaltered - these are not "inventions")
  • Scientific principles (a device or method which operates based on a new scientific principle can be patented, but the underlying principle cannot)
  • Inventions solely useful in making atomic weapons
  • Human beings

You can overcome this type of rejection by amending the claims so that they claim something which does fit within the list of acceptable inventions (or does not fit within the list of prohibited inventions). 

Method claims and the Bilski case: On October 30, 2008, the Court of Appeals for the Federal Circuit (CAFC) issued a ruling in the In re Bilski case. The claims in Bilski covered a method of limiting risk in commodities transactions, and the Court said that those claims were not patentable. The Court held that "A claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing." The USPTO immediately began issuing rejections using this "machine-or-transformation" test in accordance with Bilski, and other cases followed it. 

Bilski was decided by the Supreme Court in an opinion handed down on June 28, 2010. The Court found that business methods are patentable subject matter, and explicitly said that the "machine-or-transformation" test is not the exclusive test for patentability of methods. The opinion said:

"Today, the Court once again declines to impose limitations on the Patent Act that are inconsistent with the Act’s text. The patent application here can be rejected under our precedents on the unpatentability of abstract ideas. The Court, therefore, need not define further what constitutes a patentable “process,” beyond pointing to the definition of that term provided in §100(b) and looking to the guideposts in Benson, Flook, and Diehr. ...

"The concept of hedging, described in claim 1 and reduced to a mathematical formula in claim 4, is an unpatentable abstract idea, just like the algorithms at issue in Benson and Flook. Allowing petitioners to patent risk hedging would preempt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea. ...

"And nothing in today’s opinion should be read as endorsing interpretations of §101 that the Court of Appeals for the Federal Circuit has used in the past. See, e.g., State Street, 149 F. 3d, at 1373; AT&T Corp., 172 F. 3d, at 1357. It may be that the Court of Appeals thought it needed to make the machine-or-transformation test exclusive precisely because its case law had not adequately identified less extreme means of restricting business method patents, including (but not limited to) application of our opinions in Benson, Flook, and Diehr. In disapproving an exclusive machine-or-transformation test, we by no means foreclose the Federal Circuit’s development of other limiting criteria that further the purposes of the Patent Act and are not inconsistent with its text."

The decision wasn't good news for Mr. Bilski, as you can see, since it held that his claims still weren't patentable subject matter because they were directed to abstract ideas. For the rest of us, this is good news since the "machine-or-transformation" test has been rejected (at least, as an exclusive test), which means that patents claiming methods which aren't tied to specific machines and don't transform articles are once again open to patenting. That is, while any method which meets the Bilski "machine-or-transformation" test remains patentable subject matter, other methods which don't meet the test are also (at least potentially) patentable as well. In a sense, it's also bad news because it leaves the issue of developing rules for what methods are patentable up to the CAFC, again.  

Since Bilski there have been a series of cases defining the limits of patentable subject matter for method claims, most notably the Alice case which in essence held that an unpatentable method does not become patentable subject matter just because you describe it in terms of a system or machine-readable memory encoded with intructions to execute the method. 

Since Alice was handed down, the USPTO has come out with a number of documents trying to guide examiners in how to evaluate method claims. These can be  found on the USPTO website on a page entitled "Interim Guidance on Subject Matter Eligibility". 

Section 101 - No-Utility

A section 101 "lack of utility" rejection arises in the following circumstances:

  • DNA sequences, chemical substances or drugs with no known use. 

To overcome this rejection, you'll need to show that your DNA sequence, substance or drug does have a use - and that you described the use in the application. If you didn't, you can't add it now without adding "new matter", so you will probably have to file a continuation-in-part application to describe the use of your invention. 

  • Perpetual Motion
  • Anti-Gravity

To overcome this, you might have to perform a demonstration for the Examiner to prove your invention works. These two classes of inventions are the only cases in which Examiners routinely request working models.   

Section 102 - Novelty: 

The Examiner feels that the invention in the claim is identical to that in a cited reference. Section 102 rejections are most often based on section 102(a) (prior invention by others), 102(b) (patented, published or in public use or on sale more than a year before application) or 102(e) (a patent which issued or an application which was published after the filing date of this application, but was based on an application with an earlier filing date). 

To overcome the rejection, you'll need to point out a significant difference between your claim and the reference. Note that this difference will need to be in the claim, or you'll need to amend the claim to put the difference in - pointing out a difference between the preferred embodiment of your invention and the reference would not be sufficient. Before you argue a difference between the claim and a reference, though, check the "effective date" of the reference - sometimes a reference cited isn't really a section 102 reference at all, because its effective date is later than yours so that it isn't prior art. 

For example, suppose the Examiner cited the 1934 Schmidt patent against claim 1, and Schmidt shows a widget, but his widget does not have a frammis. You can overcome this rejection by pointing out the lack of a frammis in the reference. 

Suppose Schmidt has all of the elements in claim 1, but no fubar relay, called out in claim 2? Then you could combine claim 2 into claim 1, and the claim would be allowable (if narrower). 

What if the difference were that Schmidt had all of the elements in claim 1, but your application describes your widget as having an arcuate gribble bit? That element doesn't appear in the claims, but it is described in the specification and shown in the drawings. You cannot argue this difference, unless you amend claim 1 to include the arcuate gribble bit. If you amend claim 1 to add the bit, it would now be allowable. 

Suppose Schmidt does show the claimed invention, but it's a journal article published two years after your application was filed? Then you'd argue that it isn't a proper reference at all. 

In the past, if the publication date was less than a year before your filing date, but you can prove that you invented (conceived and reduced to practice) before the publication date, then you might have been be able to overcome the reference by "swearing back" - that is, filing an affidavit under section 131 that you had invented before Schmidt's publication. However, under the present "first inventor to file" system, which applies to any application filed after March 15, 2013, only the filing date matters - not the date of invention. If your application is still under the old "first to invent" rules, then "swearing back" may still be of some use. If it's under "first to file", you can only compare your filing date to the effective date of the reference. 

Section 103 -  Obviousness

This means that the Examiner feels that while the invention in the claim is not identically shown in any single reference, it would have been obvious to an ordinary person skilled in the art in light of the combination of references cited. This type of rejection is the most difficult to overcome, although not impossible by any means - you should focus on the question of "what would the cited references teach, if you combined them?"

Most inventors have the urge to deal with the references separately - do not fall into this trap. The Examiner has admitted that neither of the references shows your invention. That is why he issued an obviousness rejection in the first place, rather than a novelty rejection.  To overcome these rejections it is important to realize that you'll need to not only show that there are differences between the claimed invention and each of the references, but also that the combination of the references does not teach or suggest the invention in the claim.  

First, you should check the dates, as noted above - is every reference really a reference, or is one or more of them too late to be cited against your application?

Second, be sure that the Examiner has characterized the references properly - does the combination really show every element of your invention? Is some element missing from all of the references, so that the combination could not supply what each of them lacks individually?

It is often helpful to perform the mental exercise of actually combining the references - what would the combination look like? Would it be possible to combine the references at all? Would it work, or would one reference work against the other so that the combination would be inoperable? Does any of the references "teach away" from the combination? 

Are both references from the same field of technology as your invention? The legal standard is "what would a Person Having Ordinary Skill In The Art ("Mr. PHOSITA") understand from the reference?". But this requires the decision, "in what art does Mr. PHOSITA have his skill?" The term "art" means "the same field as the invention".  If one of the references is so far afield that the fictional PHOSITA would not know about it, it isn't proper to make the combination. For example, if your invention is a toothbrush with a removable head, it would not be proper to combine a brush from a carwash with the breakaway base of a highway street lamp. Perhaps you don't believe that Mr. PHOSITA would have sufficient skill to combine the references - a declaration from someone who really does have "ordinary skill in the art" might convince the Examiner. 

If all else fails, can you narrow your claims to avoid the combination? 

Double Patenting - This means that the Examiner thinks that this application claims the same invention as in another patent or patent application which has the same inventors. Obviously, if the other patent or application has different inventors, it isn't "double patenting" but rather a rejection over prior art, or cause for an interference proceeding to determine who is the first inventor. 

The rule is "one invention, one patent". If you have filed two applications claiming the same invention, the later-filed application will be rejected on the grounds that you are trying for two patents on the same invention. If the earlier filing has not yet issued, the Examiner will make the rejection "provisional" in both cases, which means that once one issues, the other will be rejected for double patenting. 

You can overcome this objection by filing a "Terminal Disclaimer" which limits the term of this application, if issued as a patent, to coincide with the term of the issued patent.

Allowable Subject Matter

The Examiner may indicate that some claims were allowed - Congratulations! Once all other problems with the application (if any) are corrected, the Examiner will issue a "Notice of Allowance" and these claims will issue in a patent. 

The Examiner may also indicate that some claims would be allowable, if rewritten to include the limitations of the claims on which they depend. This means that if you amend these claims to combine them with the claims on which they depend, the Examiner will allow them. The resulting claims will be narrower than the broadest claim in the original application, of course. 

You can also do the reverse - rewrite the claims on which the allowable claim depends - and the Examiner will then allow the base claim and all which depend on it. In this example, suppose that the Examiner indicated that claim 3 would be allowable if rewritten in independent form. You would have two choices - you could do just that, turn claim 3 into an independent claim (added material is underlined, deleted material is struck out, comments in italics):

3. The A widget of claim 2,  comprising (this converts the claim to independent)

a gronkheiser;

a cross-polarized fubar relay; (from claim 2)

a portoflan armature having a distal end and a proxmial end, in which the proximal end of the portoflan armature is arcuate, coupled to the gronkheiser; and

a frammis mounted upon the distal end of the portoflan armature.

If you do this, the Examiner will allow this claim. Or, you could move the subject matter of claims 2 and 3 into claim 1:

1. A widget comprising:

a gronkheiser;

a cross-polarized fubar relay; (from claim 2)

a portoflan armature having a distal end and an arcuate proxmial end, coupled to the gronkheiser;  and ("arcuate" from claim 3)

a frammis mounted upon the distal end of the portoflan armature.

Now, the Examiner will allow all of the claims (once the other problems are fixed), since claim 1 is now equivalent to claim 3, which he said would be allowable. 


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Don't forget our "Patent FAQ" page - it has lots of information about patents and the patent process. 


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