Posts Tagged: "claim rejections"

One promising approach is to argue that the claims are directed to a specific technological solution to a specific technological problem, as has been successful in the courts. But, even this may not be convincing, if argued in the abstract, because, after all, we are dealing with abstract ideas to begin with, and it is all too easy for an examiner to dismiss an abstract argument as “not convincing”. A concrete, bright line test can be constructed, which may sway an examiner (or appeal board, if the rejection is appealed). Articulate a specific technological problem that the claims solve or are directed to solving. Analyze the claim and cite some of the important claim limitations that are not present in the alleged abstract idea, and explain the significance of these claim limitations in terms of the technological problem and technological solution.

In this article, we will explore both § 112(a) and § 112(b) rejections by taking a look at where they are most common, how applicants respond to them, and how successful those responses tend to be. Nothing herein should be interpreted as advice as to how a particular patent applicant should or should not respond to a § 112(a) or (b) rejection. It is instead an overview of the statistical trends surrounding these rejections and a general analysis of the most effective procedural means to overcome them.

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… 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.

The refusal to grant claims because the subject matter as claimed is considered unpatentable is called a “rejection.” The term “rejected” is used by the patent examiner when the substance of the patent claims being sought are deemed to be unallowable under 35 U.S.C. 101, 102, 103 and/or 112. If the form of the claim (as distinguished from its substance) is improper, an “objection” is made. An example of a matter of form as to which objection is made is dependency of a claim on a previously rejected claim. You can also get an objection where claims have not been properly grouped together in violation of 37 CFR 75(g).