Patent Prosecution 101: Understanding Patent Examiner Rejections

By Gene Quinn
February 11, 2017

RejectionOne thing that is often difficult for inventors and those new to the patent field is the idea of being rejected by a patent examiner. It isn’t so much that the term “rejected” is confusing, we all have experience with one type of rejection or another and, generally speaking, it hasn’t been positive.

Much like being rejected by a would-be Valentine, being rejected by a patent examiner is similarly not a positive event. However, unlike certain rejections one faces in life, a rejection from a patent examiner is never the end of the story, and definitely not final – even when the rejection is called a final rejection all hope is not lost and there are things that can be done to continue to attempt to persuade and ultimately convince the patent examiner you are entitled to a patent. Indeed, patents are granted all the time after a final rejection, which must mean that a final rejection can’t be all that final then really, right?

A complete and exhaustive examination of rejections and all the various procedural options that exist after a various types of rejections have been received goes beyond the scope of this primer. Nevertheless, what follows is intended to give some basic understanding of the consequences and options facing patent applicants after they have received a rejection. And while this primer should not be read as encouraging anyone to venture into these waters solo, all inventors and managers working with innovation based technology companies should at a minimum understand the basics.


Do You Have a New Invention Idea?
CLICK HERE to Submit your Invention. 100% Confidential. No Obligation.

Rejection of Claims

After the patent examiner reads the patent application a prior art search for the claimed invention is conducted. With the results of the prior art search in hand, together with any additional references provided by the applicant, the patent application is reviewed and analyzed by the patent examiner with an eye toward the state of the prior art in order to determine whether the claims define a patent eligible, useful, novel, nonobvious, and enabled (i.e., properly described) invention. In the event the patent examiner determines that one or more of the claims are not allowable under the law (i.e., Title 35 of the U.S. Code) a rejection will be made. Frequently multiple rejections are made.

The goal of examination is for the patent examiner to clearly articulate any and all rejections to the claims as early in the process as possible so that the applicant has the opportunity to provide evidence of patentability and otherwise reply completely at the earliest opportunity. The examiner then reviews all the evidence, amendments to the claims, and arguments responsive to any rejection before issuing the next Office action.

Notice that whenever we talk about a rejection we are referring to the claims or claimed invention. One mistake many inventors make is believing a patent examiner rejects an invention. Inventions are not rejected. What is rejected is the articulation of the invention as it appears in the claims. It is perfectly possible for a patentable invention to be described in the patent application but for the claims to be too broad or otherwise have some kind of infirmity that would lead to a rejection. Therefore, a rejection is not the end of the process, but the starting point of a discussion with the examiner about what he or she will require the claim language to specifically say in order for the claim to be allowable. This is the central focus of the examination process (i.e., patent prosecution) because the patent claims define the exclusive rights actually obtained from the federal government.

Rejections Contrasted With Objections

The refusal to grant claims because the subject matter as claimed is considered unpatentable is called a “rejection.” The term “rejected” is applied when the problem arises under 35 U.S.C. 101 (i.e., patent ineligibility or lack of utility), 35 U.S.C. 102 (lack of novelty), 35 U.S.C. 103 (the claimed invention is obvious) and/or 35 U.S.C. 112 (lack of adequate description).

If the form of the claim (as distinguished from its substance) is improper, an “objection” is made. The practical difference between a rejection and an objection is that a rejection, involving the merits of the claim, is subject to review by the Patent Trial and Appeal Board, while an objection, if persisted, may be reviewed only by way of petition to the Director of the USPTO. Similarly, the Board will not hear or decide issues pertaining to objections and formal matters not properly before the Board. Having said that, sometimes (perhaps even frequently) a rejection and objection can arise for the same reason because there is overlap between the rules to the form of a claim and the substance. Many times, if you fix the problem with substance the problem with the form goes away. Nevertheless, it is possible to have separate problems between form and substance.

This probably sounds confusing. Suffice it to say that in almost all cases if you only have a problem with the form of the claim that can be rather easily addressed to the satisfaction of the patent examiner. Thus, objections are really best thought of as speed bumps. Rejections can be much more difficult.

Rejections Based on Prior Art

By far the most frequent ground of rejection is on the ground of unpatentability in view of the prior art. In assessing whether an invention is patentable there are primarily two questions that must be answered. First, is the invention new (i.e., novel) compared with the prior art? Second, is the invention non-­obvious in light of the prior art? This two-­fold inquiry determines what, if anything can be patented.

The question about whether or not there is any single reference that is identical to your invention is a threshold inquiry. Exact identity is a matter under 35 U.S.C. 102, which is the part of the patent laws that relates to what is called “novelty.” If an invention is found that is identical the inquiry ends because no patent can be obtained. If no single prior art reference identically describes each and every aspect of your invention this novelty hurdle has been cleared. If a claim is rejected under 102 because it lacks novelty one way to respond is to amend the claim to further add specifics to the claim so that it no longer identically describes the prior art the examiner has raised as an issue. You can also always choose to argue with the examiner, but generally speaking some combination of amendment and argument is required.

Beyond the question of exact identity, the next question focuses on what makes your invention unique and distinguishable over the totality of the prior art. This is required because when a patent examiner deals with issues of obviousness (i.e., 35 U.S.C. 103) they will look at a variety of references and pull this from one and that from another, ultimately seeing if they can find all the pieces, parts and functionality of your invention in the prior art. There is more to it than just finding every piece and part, because on some level all inventions are made up of known pieces, parts and functionality. The true inquiry is to determine whether the combination of the pieces, parts and functionality found within the area of your invention would be considered to be within the “common sense” of one of skill in the art such that your invention is merely a trivial rearrangement of what is already known to exist. If it is determined to be within the possession of one of ordinary skill in the art the claimed subject matter will be rejected as being obvious. Again, you can amend the claim and/or argue to overcome this type of rejection.

 

Final Rejection

A second or subsequent action on the merits shall be final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant’s amendment of the claims, nor based on information submitted in an information disclosure statement (which is how applicants identify material prior art of which they are aware, something that must be done under Rule 56).

Where information is submitted in an information disclosure statement the examiner may use the information submitted and make the next Office action final whether or not the claims have been amended, provided that no other new ground of rejection that was not necessitated by amendment to the claims is introduced by the examiner.

This means that generally speaking the second action you receive from a patent examiner is going to be a final rejection. The importance of this is that after you receive a final rejection you are quite limited with respect to what you can do as a matter of right. This matters because at this point you almost always want one more amendment opportunity, which may not be available.

Once a proper final rejection has been entered, there is no longer any right to unrestricted further prosecution. This does not mean that no further amendment or argument will be considered. Any amendment that will place the application either in condition for allowance or in better form for appeal may be entered. Amendments filed after the date of filing an appeal may also be entered to cancel claims or rewrite dependent claims into independent format. Interviews with patent examiners after final rejection are discretionary and entertained only if circumstances warrant. Ordinarily only one interview after final will ever be granted, but examiners do have discretion to grant a second interview it is determined that it would materially assist in placing the application in condition for allowance.

So even after final rejection there is still opportunity to work with the patent examiner to some limited extent, and you can certainly always appeal.

Generally speaking, what you will want to do after you get a final rejection will not be the type of thing you will have the right to do. In that likely situation, the most common thing to do is file what is called a Request for Continued Examination (RCE), which is allowed under 37 CFR 1.114. An applicant request continued examination of an application at any time after prosecution in the application is closed. Prosecution in an application is closed if the application is under appeal, or the last Office action is a final action, there has been a notice of allowance, or an action that otherwise closes prosecution in the application (e.g., an Ex parte Quayle action).

For our purposes here the first two matter. Let’s say you decide to file an appeal because you think the examiner is wrong, but then change your mind. No problem, just file an RCE. Similarly, if you’ve received a final rejection prosecution is now closed and you can file an RCE. By filing an RCE you will get a fresh round of prosecution with the patent examiner, which means two more Office actions to convince the patent examiner that your claims (or amended claims) are entitled to be issued. Of course, as with everything in the patent space it isn’t quite that simple. Remember above it says that any second or subsequent action can be made final. That means that the first action in an RCE can become a final rejection, which is appropriate if you do not force the examiner to consider something that they haven’t seen before. But that starts to take us toward Patent Prosecution 102 and beyond. Stay tuned!

 

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 24 Comments comments. Join the discussion.

  1. Charles Ankner February 11, 2017 11:15 am

    Using improper combination of references to assert 103 rejections is the bread and butter of the Office. It is fill in the blanks with cites for responses. Let alone crooked Practitioners who leverage this trend to force clients into continued examination simply to bill more hours. Plenty of graft and malpractice in the IP world to go around…

  2. Charles Ankner February 11, 2017 11:19 am

    The People rest… 🙂

    http://www.ipwatchdog.com/2016/10/03/103-rejections-common-respond/id=73214/

  3. Inventor Woes February 11, 2017 11:50 am

    Charles @1

    Doesn’t KSR now add some kind of creativity into the mix?

    “A person of ordinary skill is also a person of ordinary creativity, not an automaton.”

    Thus what makes a combination of references proper or improper? Do you use what is customary in the art? What about a person of ordinary skill in the art that is well read on many topics? Kind of like a Leonardo Da Vinci? What then?

  4. Anon February 11, 2017 1:09 pm

    Inventor Woes,

    Referencing a genius like Da Vinci in an attempt to portray anyone of ordinary skill is a self-defeating post.

  5. step back February 11, 2017 2:33 pm

    Charles @1:

    A prime cause of hindsight combining is how the PTO training Academy teaches new examiners to cobble together claim mapping rejections for 103 purposes.

    For those who are not familiar with the term, “claim mapping”, it involves making a word-for-word copy of the rejected claim and then inserting short, cryptic parentheticals into that copy.

    A boiler plate claim-mapped rejection reads like this:

    With regard to claim 1, Reference_1 discloses: An MRI apparatus (paragraph #1) comprising: a section detecting module (paragraph #12) coupled to an image analysis unit (paragraph #403) wherein ….

    Reference_1 does not explicitly disclose claim element 6. However in a similar field of endeavor, unrelated Reference_2 discloses (paragraph #603) …
    It would have been obvious for PHOSITA to incorporate the teachings of Reference_2 into Reference_1 for the purpose of [insert here some gibberish from Reference_2].

    🙂

  6. Inventor Woes February 11, 2017 6:18 pm

    Anon @4

    Referencing Da Vinci was an example of how anyone, even an examiner, can be a veritable “Renaissance man.” Thus, the examiner’s purview may include things that would not be in the same sphere of endeavor as the nominal field on the patent application. Heck, universities these days teach a core education, including calculus, physics, chemistry, biology, humanities, etc. Thus restricting the examiner’s references for 103 purposes is a mere illusion.

  7. To the board we go..... February 11, 2017 7:19 pm

    Step back @5

    The example you give is exactly how every rejection is to be written, at least for TC 2600. This is not just in the academy, but also in the art unit. Whether you agree with it or not, that is the standard.

    The question becomes, is reference 2 more toward the same field of endeavor or more toward unrelated art? While this may seem an easy question to answer for some, it can be a tough call for an Examiner, especially since some people believe KSR opened the flood gates as to what’s obvious.

    Most times, assuming reference 2 is at least somewhat related to the same field of endeavor, the Examiner is more likely to make the rejection. Possibly for the simple reason to avoid arguing against an error with his/her SPE as to why the combination should not have been made.

    Once the rejection has been made, it will most likely be maintained for the fact that someone reviewing the application will now have all the claimed parts detailed in the previous rejection when deciding on giving an error or not.

    Making a decision to reject or allow claims can be one of the most difficult parts of the job for an Examiner.

    Two examples that occur more often than one would think:

    Just recently Examiner Joe was working with a very senior and respected Examiner Jane who was asking for input on a set of claims. Not only did Joe tell Jane she should reject the claims, Joe pretty much wrote the rejection for Jane. However, Jane did not agree on the obviousness of the combination and allowed the claims.

    And just recently, a different Examiner Joe was consulting with a different Examiner Jane, who is a well respected and senior Examiner. Jane thought the claims should be rejected. However, Joe allowed them because Joe didn’t think the combination was obvious.

    This is one of the issues….examining is subjective, unless you are dealing with an attorney that always says the claims are allowable in the amendment. 🙂

    Not every Examiner is a bad one. A lot of the time, the Examiner is simply doing what he/she has been trained to do.

    Quality, for most Examiners, is directly related to the time given for examination.
    The Examiner knows that every rejection may not always be the best…but it’s the best for the time allowed.

    The quality of claims, significant amendments to the claims in an Amendment, and the adding of 20 additional claims in an Amendment, all play a role in the quality of a rejection.

    After all, if an Examiner doesn’t make production, he/she gets fired.

    So, if you want better quality, give Examiners more overall time or more time for harder case, or limit the amount of claims that can be submitted, or some combination of the two. In my humble opinion.

    Actually having an IT infrastructure that works half the time would be great too. With the amount of money you guys pay for an application, I would think there would be outrage at the failing of the PTO IT.

    One more important thing, the PTO needs to stop changing the way examiners do things that have little importance. Ask an Examiner how much longer it takes to complete the new interview summary form using the action wizzard or how much longer it takes to fill out the search strategy form using the new method. That extra time is not insignificant over the year, and directly takes time away from prosecution.

    Oh, and for any applicant, including individual inventors, interviews are almost always helpful.

  8. Inventor Woes February 11, 2017 7:29 pm

    @7

    Sounds eerily similar to the problem of means-testing in welfare distribution operations.

  9. To the board we go....... February 11, 2017 8:15 pm

    Step back @5

    One more important issue….the standard being taught should not necessarily include finding word-for-word. In my experience, finding exact words can be common for some of the claim limitations, but it is a rare case that every claim limitation can be mapped word-for-word against prior art.

    When I went through the acadamy, we were not taught to look for exact wording. In fact, it’s common training to look for the actual invention rather than just the claimed invention.

    I really hope new Examiners are not being taught as to how you are saying. And in fact, I’ve never heard of this before. Possibly some trainers going rogue, but I am sure (hopefull) it’s not common.

    Of course the cryptic language should be telling you how the claim limitation is mapped to the prior art. If it’s too cryptic, an interview should help.

    Now, I’m not going to say every Examiner is great. However, most of the Examiners I know take pride in the work they do.

    Also, I believe interviews are important. When I am in an interview, I usually inform the Applicant as to if the proposed amendment will overcome the current rejection and if the proposed amendment will be easy to find. I have found that most Applicants simply want to move prosecution forward, so they are usually just happy to here the proposed amendment will require new/additional art.

  10. To the board we go...... February 11, 2017 8:18 pm

    Inventor woes @8

    Not sure what you mean by eerily similar to the problem of means-testing in welfare distribution operations. However, it doesn’t sound positive.

  11. Inventor Woes February 11, 2017 8:29 pm

    I mean it’s wrapped up in bureaucratic red tape.

  12. Inventor Woes February 11, 2017 8:30 pm

    I don’t know what’s quicker, getting your driver’s license renewed at the DMV or getting a patent.

  13. To the board we go.... February 11, 2017 8:36 pm

    Charles Ankner @2

    That’s a lot of 102 rejections in that link. Would love to see a break down per TC and art unit.

    102s are very rare in my art unit.

  14. To the board we go..... February 11, 2017 9:03 pm

    Inventor woes…

    This may not apply to you, but in some applications, applicants do not want to claim the actual invention at first. Instead, they incrementally amend to try and get the broadest claims. The claims are so broad, they simply cannot be allowed under our training of broadest reasonable interpretation. What’s reasonable can be subjective.

    I don’t fault them because I have no idea what their strategy is. And broad claims are desired. But it prolongs prosecution.

    Within reason, I would think that any applicant would want the Examiner to interpret the claims in a broad way since the required amendments may be beneficial if the claims are ever challenged in court.

    Of course there are always examiners that are unreasonable. This is the same for attorneys

  15. To the board we go..... February 11, 2017 9:14 pm

    Inventor woes…..

    And another thing, significant spelling errors, lack of antecedent basis, and indefinite issues can significantly prolong prosecution. Amendments that cause these issues can really add to persecution too.

    I can’t even tell you how many amendments result in a final rejection that’s twice as long as the previous non-final rejection.

    And because sometimes the original claims are so bad, detailed prosecution may not even start until after the first RCE.

    Yes, bad examiners are an easy target. But, I worked in a law firm before the PTO, and I can tell you, there are many applicants that are not served well by their attorneys.

  16. step back February 12, 2017 3:40 am

    Pre-Appeal Guy (TTBWG) @7

    It’s not a matter of agreeing with you.
    It is blatant hindsight.

    You are using applicant’s claim as a blueprint not only for piecing together a rejection but also as the reason why, at the relevant time, PHOSITA would have done with foresight what you do with aid of hindsight.

    Of course this no one’s fault. It is the accepted “standard”. 😉

  17. Anonymous February 12, 2017 12:01 pm

    Step back @ 15
    The office teaches mapping the art to the claims for a variety of reasons. Since each and every limitation of the claim must be present in the art either alone (in a 102) or in combination (in a 103), by mapping to the claim limitations, it best ensures that the limitations are all addressed and none have been inadvertently omitted. Additionally, where the prior art and the claimed invention use different vocabulary, unless there is a correspondence established, such as by mapping a reference character of the prior art to the exact claim language, it can be a guessing game as to the examiner’s interpretation or the prior art. Another reason is that it makes it easier to quickly review an examiner’s work product (at least Internally).

    The question of hindsight is determined not based on the format of the 103 rejection, but rather by the content of the art.

    Rejections under 103 are the hardest concept for new examiners to understand, and sometimes takes years before an examiner consistently applies them properly. A proper 103 requires an understanding of how the invention works and how that translates into the claim language. It requires an understanding of how the technology works, in general, to understand how a proposed modification of a prior art reference would impact other functions or structures of the device. It requires the ability to visualize the resultant combination of references. It also requires an understanding of what it typically done in art, what is conventional, what are standard modifications, what are known substitutions of elements, why would one of ordinary skill do these and what benefits would they expect to gain.

    A full understanding of what is obvious and what is hindsight goes hand-in-hand with an understanding of where the line is for patentability in a particular technology and takes years to master. Some examiners will never get there.

    Also, the standard for a rejection does not require the examiner to be certain, or beyond a reasonable doubt but is based on a preponderance of the evidence (more likely than not as they translate in training for examiners without a legal background). Therefore, if an examiner is conflicted as to if something is obvious (say, there are definitive reasons to do something but also definitive reasons not to do the same thing), the examiner is likely to make the rejection and is prepared to let the attorney convince them the rejection is not obvious. This might seem, on the outside, as a disregard of what is obvious, but from the inside, it is the examiner doing their job of applying the proponderance of the evidence standard to the best of their ability and with the information they have befor them at the time of writing the rejection.

  18. Gene Quinn February 12, 2017 3:34 pm

    Inventor Woes @3 and @6-

    Citing Leonardo Da Vinci as a possible person of ordinary skill is rather amusing. As Anon points out, when you say that you defeat any point you tried to make and sound absolutely ridiculous in the process.

    Then in comment #6 you try and play it off as you were just pointing out that examiners can be a Renaissance man (or woman presumably) as was Da Vinci. Your comment goes on to suggest that the patent examiner might be a person of ordinary skill in the art. Although not as ridiculous as your suggestion that Da Vinci and those who are among the most brilliant scientists and engineers of the moment are of “ordinary skill,” any claim to suggest an examiner is of ordinary skill is equally incorrect.

    This is a problem that is most evident presently at the PTAB. The Office hired hundreds of patent attorneys with very specific expertise, many (if not most) with PhDs. It is hardly shocking that they are more than two times as likely to find claims obvious than a district court because these PTAB judges are not ones of “ordinary skill.” If anything, they have extraordinary skill (or at least extraordinary familiarity) with the art.

    Some examiners are the same. Of course, some examiners are well below “ordinary skill” in the art where they examine. I’m hearing more and more from examiners that it is all too typical for Supervisory Patent Examiners to have little or no experience in the arts where they manage, which is mind boggling.

  19. Anon February 12, 2017 3:39 pm

    Thanks Anonymous for the detailed views.

    I think that I can speak for many prosecutors when I say that an examiner who is under trained (or not trained) to the level that you speak of produces far inferior (and more costly in terms of time and money) prosecution than what is acceptable.

    Being “easy” (in any way) or not understanding (or being able to understand or do) the actual job of examination cannot be – and must not be allowed to be – some type of excuse for a lack of proper examination.

    The examination “ideal” that you paint is in actuality the real job of ALL examiners.

    Several threads back now, there was a discussion on “patent quality.”

    It is the examination that you portray (the proper application of 103) that provides – that is the ONLY way to provide – quality patents.

    Congressional (and Office) attempts to improve patent quality need to focus squarely and solidly on producing examiners that can examine properly.

    All else is lipstick on pigs.

  20. To the board we go.... February 12, 2017 6:27 pm

    Gene @18

    As I have witnessed, new SPEs are constantly promoted to different workgroups than the one they were in as an Examiner. Also, it’s seems less common, but it still occurs, current SPEs are moved to different workgroups. The argument can be made that there is no qualified examiner in an art unit to fill an open SPE position in that art unit. However, I don’t think this is the primary reason. The result usually is the new SPE sends a junior examiner to a primary for help, since the new SPE doesn’t know the art. When I was a junior, my new SPE was from a different art unit. It didn’t have that much negative effect since I new which primary examiners to seek help from if I wanted an allowance.
    It was more of an inconvenience than an actual problem.

    However, if a new SPE doesn’t like to allow claims, this can be a real hinderance since the new SPE would simply say it’s not allowable, even though he/she doesn’t know the art.

    But, old SPEs can be the same way. I remember one SPE that wouldn’t allow anything. A sigh of relief came when he retired.

  21. To the board we go...... February 12, 2017 6:50 pm

    Gene:

    Not to cloud the issue about skill in the art…..however, MPEP 2141 roughly states that examiners can rely on their own technical expertise to describe the knowledge and skills of a person of ordinary skill in the art.

    Also, chore-time equipment, inc roughly states that obviousness can be made without a finding of skill where the prior art itself reflects the appropriate level.

    Would love to hear the opinions of some practitioners about these two statements.

  22. To the board we go.... February 12, 2017 7:25 pm

    Step back @6

    Of course we have a from paragraph that talks about hindsight……obviousness is in a sense necessarily a reconstruction based on hindsight reasoning. MPEP 2145.

    It seems to me that the problem is not with the Examiner, rather it is with how the Examiner is trained to do the job.

    Not trying to argue with you. 😉

  23. Inventor Woes February 12, 2017 8:48 pm

    Gene

    I said “Kind of like a Leonardo Da Vinci.” Those were my exact words. That means “like” him, not someone who is him. Thus I didn’t try and “play it off.”

  24. Lost In Norway February 13, 2017 4:01 am

    Thanks for the article, Gene. I thought it did a good job of covering the basics for an inventor to wade in. Do you plan on writing an article on advice for an inventor in answering an office action? Not that I’m trying to put myself out of work or anything 🙂

    Right from day one, I tell my customers that the patent board is going to hate their invention. That the examiner is going to find all kinds of reasons (some valid and some invalid) to justify their position. It is our job to work with the examiner to find common ground.

    If the inventor does decide to go it alone, it is advisable for them to strike the right tone in correspondence. I have had some cases where the inventor comes to me after a final rejection and wants me to take over prosecution. This is difficult. One reason of the difficulty is that an inventor will quickly take the rejection personally and then go on the. My personal favorite was when an inventor asked the examiner, “Do you actually have any qualifications to judge my invention? Any moron would see that this was inventive”. Talk about smoothing down some ruffled feathers at the USPTO.

    It is also confusing to the inventor the way the examiner recites the exact 101, 102, 103, 112 laws before each section. I can practically see the inventor’s eyes glaze over.

Post a Comment

Respectfully add to the discussion.

Name *
Email *
Website