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.