How to Respond to a § 102 Rejection

By James Cosgrove
April 6, 2017

In the past, we have undertaken in-depth studies of both § 103 rejections and § 101 rejections (both before and after the Bilski and Alice cases). In this article, we will discuss the prevalence of § 102 rejections, how applicants respond to them, and how successful those responses are. The data for this study is based on all rejections issued at the USPTO between the years of 2005 and 2014 and is limited to utility patent applications.

Arrangement of § 102 Rejections

Section 102 rejections are the second most-issued rejection basis at the USPTO after § 103 rejections, accounting for 42% of the first final rejections issued between the years 2005 and 2014. During that time, they have actually become less common than they used to be, accounting for 56.1% of all first final rejections in 2005, but just 39.2% in 2014, a decrease of about 30%. See Figures 1 and 2 for the overall percentage of § 102 rejections and the percentage of § 102 rejections over time.

 

When it comes to the percentages of § 102 rejections within the various technology centers, they are fairly evenly distributed across the USPTO, although technology centers 2800 and 3700 have the highest percentage of § 102 rejections, at about 49% each. When looking at the art unit level, the 2800s and 3700s are well represented, both accounting for seven of the top 10 art unit groups with the highest percentage of applications that receive at least one § 102 rejection. See Figures 3, 4, and 5 for tech center and art unit group numbers.

How Applicants Respond to § 102 Rejections

There are several ways to respond to a rejection, most notably a Request for Continued Examination (RCE), an interview, and an appeal. Among those, RCEs are the most popular rejection response for § 102 rejections, a phenomenon which follows the same trend as every other rejection basis we have studied. Interviews were the least popular response, which is a notable departure from our other studies, which found that appeals are usually the least popular response.

For exact figures on the frequency of each type of response in the context of § 102 rejections, see Figure 6.

(Note: Because almost all successful responses to final rejections also include a subsequent amendment, we did not consider an amendment to be a distinct response to a final rejection, and thus we calculated how applicants responded whether or not that response included an amendment. For applications in which there were multiple responses (i.e., an RCE and an interview), we did not determine the chronological order of those responses, but merely that each response was made to the rejection at some point prior to a subsequent rejection or an allowance.)

As shown in Figure 6, RCEs are far and away the most popular strategy for responding to a § 102 rejection, accounting for 60% of all applicants’ responses to § 102 rejections. The next most popular response besides abandonment was appeals, which were found in 12.7% of applications. 15.2% abandoned their application after receiving a § 102 rejection.

Success of Applicant Responses

As we’ve seen with our other studies, some responses are better at overcoming § 102 rejections than others. Just because RCEs are popular does not mean that they are successful. In fact, an RCE is actually the least effective method of overcoming a § 102 rejection, since they are successful only 56.2% of the time. While RCEs have the lowest success rate among all responses, the data shows that § 102 rejections are actually fairly easy to overcome. See Figure 7 for the success rates for all types of responses.

(Note: For the purposes of this study, A rejection is “successful” if the next office action is either a Notice of Allowance or another rejection that does not cite the same rejection basis as the previous office action. For example, assume that an applicant receives a final rejection that cites §§ 101 and 103, she responds with an RCE, and the next rejection only cites § 103. We assume that the RCE was successful at overcoming the §101 rejection, since it was not raised again in the subsequent rejection. We also narrowed the data to instances where the response highlighted was the only response to the rejection in order to measure the effectiveness of each of the responses on their own, unaffected by other responses that could be influencing the outcome).

 

As shown in Figure 7, an interview is the most successful response to a § 102 rejection, with a success rate of 67.6%. Going down from there are interview + RCE (62.5%), appeal (57.4%), and RCE (56.2%). Thus, while RCEs are the most common type of response, they are also the least successful. On the flip side, interviews are the most successful response, but they are also the least common.

What this Means for Applicants

Section 102 rejections are very common at the USPTO and you are likely to get one no matter what kind of technologies you work with. Fortunately, they are not terribly difficult to overcome, as even the least successful method of responding to them is still successful over half of the time. If you get a § 102 rejection, then an interview or an interview paired with an RCE is the best way to respond. Generally speaking, an appeal is arguably the worst way to respond, even though their success rate is not the lowest. This is because appeals have a success rate that is only 1.2 percentage points higher than RCEs. Thus, in most cases there is little reason why any applicant should appeal a § 102 rejection rather than choosing an RCE, since doing so will cost significantly more than and take longer to resolve for almost no additional benefit. Thus, in the ordinary case an appeal wouldn’t generally be the most reasonable first choice to pursue. Filing an appeal instead of an RCE should, therefore, require some kind of special factor that would lead the applicant or attorney to view it as having a strategically superior advantage.

The Author

James Cosgrove

James Cosgrove is a Legal Analyst at Juristat, a legal tech company that develops predictive models of the behavior of judges, patent examiners, attorneys, and other entities. He is a 2014 graduate of St. Louis University School of Law. A member of Juristat’s marketing team, he has written extensively about big data in the law, including Juristat’s first white paper on the effectiveness of data in patent prosecution and an e-book charting the effects of the Alice decision on the USPTO.

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 7 Comments comments.

  1. American Cowboy April 6, 2017 10:22 am

    Sorry, but I really do not find this article helpful. It is all about procedure and not at all about substance. I was expecting to find information about arguments that the examiner was too broad in his BRI, or arguments that the prior art really does not show what s/he says it shows, or ways to amend.

    I would like to hear from other practitioners if they found something useful in the article.

  2. Curious April 6, 2017 10:39 am

    I would like to hear from other practitioners if they found something useful in the article.
    Nothing useful — typical of these articles.

    Every application is different. Different claims and different prior art. What works for one might not work for another.

    Also, the responses are self-selected. If you’ve got great arguments, you (should) appeal. If you’ve got a reasonable Examiner who is willing to work with you, you can do an interview. You can also interview (but find out that the Examiner is not reasonable), and then file a RCE. If the art is good (or the attorney/client doesn’t want to fight too hard), then just file a RCE.

    Regardless, every application is different and must be prosecuted on its own merits. Just because something worked in another application doesn’t mean it’ll work in your application.

  3. STEVEN WEINRIEB April 6, 2017 10:49 am

    I respectfully agree that this article is not really that helpful, and my biggest objection is the fact that nowhere is there stated, unless somehow I overlooked it, that you cannot simply file an RCE – an RCE can only be filed after a final rejection or other situation where prosecution has effectively been closed – see 37 CFR 1.114. So if you receive a first office action rejection under 35 USC 102 , you cannot in fact file an RCE. Furthermore, the entire objective of filing an RCE is to effectively restart prosecution with hopefully “better” claims which will be deemed by the examiner to place the application in condition for allowance. When you file a patent application, the examiner will of course examine your original claims. He will then, in all likelihood, issue an office action which, for example, may include a 102 or 103 rejection. You then amend the claims, arguing that your amended claims now define over the prior art used by the examiner under 102 or 103. He may agree and allow the application, or he may disagree, retain his rejection, and make the next office action final – or he may agree that your claims overcame his originally cited prior art under 102 or 103 but he may cite new prior art and still make this rejection final, stating that your amendment forced him to cite new art.
    THEN, and only then, can you file an RCE. In some cases, even after final rejection, and depending upon the examiner and what amendments you need to place the application in condition for allowance, he may let you make the amendments and place the application in condition for allowance even though you are technically after final rejection. This is how the system works. But you do not simply get to choose to file an RCE whenever you want to, and in certain cases, you may not need to file an RCE because you can in fact work with the examiner to develop claim language which is both acceptable to the examiner and to your client.

  4. Anon April 6, 2017 11:32 am

    Anecdotally (and feeding on the observations already made vis a vis timing), the prevalence of RCEs for dealing with a 102 issue (which should be satisfied in a first response), play a strong indicator that actual examination on the merits is not happening right out of the gate – and is somewhat reminiscent of the (perhaps albeit diminished) RCE-gravy train gamesmanship that Examiners play “for counts.”

    This is yet another indicator of poor Office management, in which internal metrics are the driver rather than what applicants pay for: a thorough, full, and fair examination on the merits.

    When the Office “count” system generates “counts” as opposed to “real examination,” it is time to better manage (internally) the system.

  5. STEVEN WEINRIEB April 6, 2017 11:51 am

    Why is everyone so focused on the interconnection between 102 rejections and RCE? – RCEs can be used to effectively restart prosecution with respect to any rejection – 102, 103, 112, whatever – RCEs effectively guarantee that your proposed amendment will be entered on the record and must be considered by the examiner as opposed to trying to file an amendment after final rejection where the examiner has the discretion to refuse entry of the amendment onto the record and to consider the same upon the merits.

    As for the comment re the examiners issuing rejections and effectively forcing the filing of RCEs after final rejections, this “game” has been going on for decades – it is nothing new – but the USPTO has never really done anything about it – the After Final Program was supposed to alleviate this problem, and in some cases, it has in fact reduced the need for RCEs because it provides the applicant one last shot to reach an agreement with the examiner concerning allowable claims, but even with the After Final Program, some examiners stubbornly cling to their rejections and force the filing of an RCE in any case – in other cases, the applicant succeeds in reaching an agreement with the examiner re allowable claims. Unfortunately, it is dependent upon the particular examiner, or in the case of a junior examiner, upon the particular primary examiner who, in some instances, is as intractable as the junior examiner.

  6. Anon April 7, 2017 1:35 am

    The post provides useful information. On 102/anticipation, the Fed Cir has recently chastised the PTAB (In re Chudik (March 27, 2017), which cites Nidec Motor (March 14, 2017)). Those cases should be cited, as appropriate, in appeals to the PTAB, whether in an opening brief, a reply brief or a request for rehearing. Additionally, 102 rejections too often rely on unreasonable interpretations of claim terms or cited art (see In re Imes). The downward trend in 102 rejections should continue and the PTAB can help promote that trend by applying the proper standards.

  7. David Stein April 8, 2017 10:09 pm

    I agree with the posters above: I don’t see anything in this article that will change my practice.

    The comparison of appeal vs. RCE+amendment is an apples-to-oranges comparison. Amending the claims may be 5% more likely to traverse the rejection – but it is 100% more likely to modify the scope of the claims in a restrictive manner than *not* amending the claims, right? (Considering that amending the claims in a broadening manner probably has a 0% chance of traversal!)

    While narrowing amendments are appropriate for valid rejections, they are generally a bad idea in cases where the rejection is technically or legally flawed. Absent extenuating circumstances (e.g., client budget constraints), making restrictive claim amendments that are not required by the prior art is a poor value proposition – especially if, as this article claims, the odds of traversing the rejection are only a single-digit percent increase.

    Finally – one point that renders these metrics unhelpful: Examiners do seem more compelled these days *not* to stand pat on a single reference over multiple rejections, but to conduct a new search and cite new references – either replacing the § 102 art with new art, or transmogrifying it into a § 103 rejection that adds new art teaching the specific point that the applicant claimed to be missing from the § 102 rejection. However, I often find that the new art is not any better than the old art: the new reference or combination exhibits precisely the same technical deficiency as the first § 102 rejection. According to the metrics in this article, the applicant’s initial argument was a success – but substantively, prosecution has not advanced, and the case is no closer to an allowance.