There are several major statutory rejections that an applicant can receive during the course of patent prosecution at the USPTO, each one corresponding to the relevant section of the Patent Act: § 101 (subject matter), § 102 (novelty), § 103 (non-obviousness), § 112(a) (specification), and§ 112(b) (definiteness). Any application can receive any one of these rejections, but some are more common than others, especially when considering technology center and the type of technology involved. For example, § 101 rejections are very common in TC 3600 due to the presence of the§ 112(a) Alice-heavy e-commerce art units, while fairly simple inventions are more likely to receive § 102 rejections. In addition to prevalence based on technology type, the type of rejection an applicant can receive can also depend upon where their application is in the prosecution process. When it comes to first final rejections, § 103 rejections are the most common.
See Figure 1 for a visualization of the prevalence of each statutory rejection basis for all first final rejections issued in each year for the ten-year period from 2005 to 2014, and Figure 2 for the overall percentages for all ten years combined.
As shown above, § 103 is the most common statutory basis for a first final rejection, followed by § 102. Overall, § 103 was cited in 66% of all first final rejections over the ten-year period, followed by § 102, at about 38%. By far the least common statutory basis was § 101, which was cited in only 6.1% of first final rejections for the ten-year period. Note, these percentages do not add up to 100% because each rejection can contain multiple statutory bases.
Why § 103?
Under § 103, a patentable invention must be a non-obvious improvement over prior art; thus, a rejection under this section means the examiner considers the invention at issue to be obvious. A § 103 rejection can be tricky because, often, the prior art that allegedly teaches the invention at issue is not disclosed in a single reference, but can be inferred from a combination of references. An obviousness determination, then, is intensely fact-specific and subjective in nature. One way to smooth out this legal landscape is to use a reasonable person standard—would a person of ordinary skill in the art of the invention have found it obvious to make at the time the application was files (or at the time of invention, for pre AIA applications)? Even when courts use this standard, however, there can still be room for debate as to what “ordinary skill” in a particular art actually means. Section 103 rejections are likely the most common first final rejections for these very reasons—obviousness determinations are subjective, and reasonable minds can easily disagree on their outcome.
How Applicants Respond
There are a variety of strategies available to an applicant responding to a first final rejection under § 103. When determining how they responded, we looked into the file wrappers for all applications that received a first final rejection that cited § 103. We then looked for responses to that rejection—either an RCE, an appeal, an interview, or a combination thereof. 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.
See Figure 3 for the most common responses to § 103 final rejections.
When responding to a first final rejection under § 103, the majority of applicants (56.6%) choose an RCE. Substantially smaller percentages choose interviews (6.9%) and appeals (9.3%). A few applicants choose to add an interview to their RCE (9.3%) but this, again, is a small group. All other combinations of responses, including abandonments, amounted to 17.9% of responses, collectively.
How Successful Are They?
Some responses to § 103 rejections are better at overcoming § 103 rejections than others. When we say that a rejection was “overcome,” we mean that, when looking at the file wrapper, we found a final rejection, followed by a response to that final rejection, followed by either a subsequent rejection or an allowance. In cases where there was not an allowance but, instead, a second rejection, we consider the § 103 rejection overcome if the second rejection does not cite § 103 as a basis of the rejection. For example, if a first final rejection cites §§ 101 and 103, then the applicant responds, and the next subsequent rejection cites only § 101, we assume that the applicant’s response was successful in overcoming the § 103 element of the first rejection.
See Figure 4 for the average success rates in reopening prosecution or obtaining allowances for the above rejection responses. (Note: The percentages for overcome rejections are inclusive of allowances).
As demonstrated in Figure 4, an appeal proved to be the most successful response to a final rejection under § 103, followed by an interview. The least successful response, curiously, was an RCE. Even adding an interview to the RCE only marginally improved its chance of success. Despite RCEs being the most popular response to § 103 rejections, they are decidedly the least successful. Of course, the best way to respond to any final rejection depends upon the applicant’s particular examiner. However, when looking at the big picture across all examiners and tech centers at the USPTO, it appears that the motivated applicant might want to skip the RCE and go straight for an appeal in these situations.