Understanding the Different Types of Patent Rejections

The patent application process can be complicated, and it's essential to understand the potential rejections that may be raised against the claims in your application. A USPTO Examiner typically asserts these rejections in an Office Action issued while prosecuting your patent application. Some of these same rejections can also be used to challenge the validity of an existing patent. For example, if an entity is accused of infringement, it may bring an action before the PTAB to invalidate an asserted patent claim based on these rejections. Similarly, these rejections may form the basis of a defense to an infringement claim in federal court.

Section 101: Nonstatutory Subject Matter

Section 101 of the Patent Act (35 U.S.C. §101) provides guidelines for what can be patented. It is a significant setback when an invention is deemed ineligible for patent protection under this section. This determination is usually made when the invention is seen as a law of nature, natural phenomenon, or abstract idea. If an invention receives a rejection under Section 101, it may be possible to overcome this hurdle by making amendments or presenting arguments that demonstrate the invention encompasses "significantly more" than the law of nature, natural phenomenon, or abstract idea integrated into the rejected claim.

It is important to note that Section 101 is a precursor to any determination of anticipation under Section 102 (35 U.S.C. §102) and obviousness under Section 103 (35 U.S.C. §103) of the Patent Act. In other words, the claims may still be rejected as reciting non-patentable subject matter, no matter how new or novel the invention is.

This rejection type is common during the prosecution of software-based patent applications. Suppose we assert that your invention's novelty lies in transitioning the implementation of a known method onto a computer. The Examiner may reject the claim as reciting the abstract idea of implementing the known method on a general-purpose computer (GPC). A GPC may be defined as an off-the-shelf processor-based computing device whose default operating system and hardware have not been altered to accommodate the implementation of the known method. 

To understand this rejection type, it is helpful to consider the scope of protection that a claim would provide if allowed. A patent claim whose only limitation is implementing the known method on a GPC would enable the patent owner to prevent anyone from implementing the known method on any computer.

To overcome this rejection, the claim might be amended to add a limitation requiring modifications to the operation system or specific hardware requirements. Accordingly, the scope of the allowed patent would be limited to implementations of the known method on computers that include the defined operating system modifications or the specific hardware requirements.

Suppose now that we assert that the invention's novelty lies in the steps of the method itself as implemented in the computer. The Examiner may reject the claim as reciting the abstract idea of implementing only those broad steps necessary to implement the method on a computer. In terms of scope, a patent claim whose only limitations are these broad steps would allow the patent owner to stop all implementation of the known method irrespective of any specific or additional steps used to implement it.

To overcome this rejection, the claim might be amended to add additional and specific steps to implement the known method on the computer. These steps may define specific actions such as retrieving data, creating a data element with a specific configuration, processing, manipulating, or presenting data, or outputting data in a particular manner or with a specific configuration. Accordingly, the scope of the allowed claim would be limited to implementations of the known method on computers that include these specific and additional steps.

The interaction between scope and patentable subject matter can be applied to inventions incorporating a law of nature or a natural phenomenon. It's important to note that a patent claim cannot have a scope that is so broad as to prevent all uses of a law of nature or a natural phenomenon, regardless of how they are integrated into the claimed embodiment. Therefore, the recited implementation must have sufficient limitations to allow others to use the same law of nature or natural phenomenon.

Section 101: Double Patenting

This rejection under Section 101 is intended to prevent the extension of patent rights by filing multiple patents for identical or non-distinct variations of an invention. There are two kinds of double patenting. 

"Statutory" double patenting bars an inventor from having two patents with the same or effectively identical claim. Because statutory double patenting requires the same claim in two patents, it is relatively easy to avoid by amending the claim language.

"Obviousness-type" double patenting bars an inventor from having a patent with a claim that is obvious over a claim in another of the inventor's patents. The type of double patenting arises from case-law doctrine created by judges. The principle is that an inventor should not be able to extend the life of a first patent by obtaining a second patent with a claim that is an obvious variation of the invention claimed in the first patent. 

To overcome obviousness-type double patenting rejections, the owner of both patents may file a terminal disclaimer. The terminal disclaimer limits the term of the second patent to that of the first patent. However, if the two patents are not under the same ownership, a terminal disclaimer is no longer a viable solution.

Section 112(a): Non-Enablement

The enablement requirement under Section 112(a) of the Patent Act (35 U.S.C. §112(a)) requires that the patent application specification describe the invention in such terms that one skilled in the art can make and use the claimed invention.

A non-enablement rejection under Section 112(a) asserts that one of reasonable skill in the art could make or use the invention based on the disclosure in the specification coupled with information known in the art without undue experimentation.

This rejection cannot be overcome by adding material to the specification during prosecution. Instead, it must be argued that the teachings in the specification are commensurate in scope such that one of ordinary skill in the art could practice the invention without undue experimentation.

In making this argument, it is essential to note that a patent need not teach what is well known in the art. Instead, the more that is known in the prior art about the nature of the invention, how to make it, and how to use it, and the more predictable the art is, the less information needs to be explicitly stated in the specification. Therefore, the amount of guidance or direction required to enable the invention is inversely related to the amount of knowledge in the state of the art as well as the predictability in the art.

The determination that "under experimentation" would be needed to make or use the claimed invention is based on evaluating one or more of the Wand factors as a whole. The Wand factors include the nature of the invention, the state of the prior art, predictability or lack thereof in the art, the amount of direction or guidance present, the presence or absence of working examples, the breadth of the claims, the relative skill of those in the art, and the quantity of experimentation needed.

To sustain a non-enablement rejection, the Examiner must show that based on each of the Wand factors, the specification, at the time the application was filed, would not have taught one skilled in the art how to make and use the full scope of the claimed invention without undue experimentation.

Section 112(b): Indefiniteness

An indefiniteness rejection under Section 112(b) of the Patent Act (35 U.S.C. §112(b)) asserts that certain claim language is indefinite. This rejection is often regarded as "non-substantive" because it typically relates to the claims' form, not the substance. It is usually resolved by a reasonably simple response correcting the Examiner's objections.

Section 102: Anticipation

An invention must be new and novel to obtain a patent. An anticipation rejection under Section 102 of the Patent Act (35 U.S.C. §102) asserts that a single prior art reference teaches each element of the patent application's claim. Generally speaking, prior art refers to information available to the public that predates the filing date of a patent application. Prior art may include patents and other printed publications available to the public anywhere in the world before the patent application's filing date.

To overcome this rejection, you may either use legal arguments to explain or argue to the Examining Attorney why each claim element is not anticipated or taught by the prior art reference, or you may include additional elements, supported by the specification, to a claim to narrow the claim's scope and differentiate it from the prior art reference.

Section 103: Obviousness

In addition to being new and novel, an invention must be a non-obvious improvement over the prior art. An obviousness rejection under Section 103 of the Patent Act asserts that the claimed invention would be obvious to a person of ordinary skill in the art in view of the prior art. In other words, the Examiner asserts that a person of ordinary skill in the art of the invention would have found it obvious to make at the time the application was filed.

Obviousness is likely the most common type of rejection during the prosecution of a patent application. Unlike anticipation, an obviousness rejection may be based on a single prior art reference or a combination of references, each disclosing one or more of the claimed elements.

An obviousness rejection must be based on the following:

• the use of analogous prior art;

• a suggestion or motivation to combine the references; and

• a reasonable expectation of success of the combined elements.
  

A reference is considered analogous art if it's from the same field as the invention, even if it addresses a different problem, or if it's relevant to the inventor's problem, even if it's not in the same field.

The prior art references may provide some teaching, suggestion, or motivation that would lead an ordinary person of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.

In addition to the prior art references, the Federal Circuit has recognized that common sense, wisdom, and knowledge are considerations in an obviousness determination. The court has provided three directives regarding "common sense" in an obviousness analysis: (1) common sense can provide a known motivation to combine (cheaper, faster, more convenient, etc.); (2) common sense can supply a missing claim limitation only if the limitation is "unusually simple;" and (3) common sense cannot be a substitute for reasoned analysis and evidentiary support, even when providing motivation to combine references.

In its 2024 Guidance, the USPTO states that there will be an increased emphasis on adopting a flexible and common-sense approach to establishing a prima facie case of obviousness, encouraging patent examiners to consider a broader range of factors and acknowledging the creativity of a person of ordinary skill in the art.

Lastly, a reasonable expectation of success refers to the likelihood of success in combining references to meet the limitations of the claimed invention. Unlike a motivation to combine determination, which requires explicit analysis, a reasonable expectation of success can be implied. 

How TCP Law Can Help

Effectively navigating patent rejections is essential for securing and maintaining patent protection. Each type of rejection presents unique challenges, but understanding them can facilitate strategic responses. A TCP Law patent attorney can help you understand these rejections and guide you in responding to them.

For assistance with patent rejections or with any other patent issue, please contact TCP Law at info@tcplawfirm.com or 917-612-1059.