Posts Tagged: "§ 112"

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.

Unfortunately, §102, §103, and §112 issues can and do get wrapped into the court’s §101 reasoning, thus resulting in opinions with no differentiation. In the end, courts are forcing a round peg into a square hole when they seek to turn the patentability test into a single factor test analyzed under §101. Such a reworking of the patentability test is contrary to what the Supreme Court said in Diehr, and it violates the statutes passed by Congress. In essence, the courts are legislating from the bench when they consider novelty, obviousness and description under §101. So if you are confused by why decisions are relying on §101 when other sections of the statute seem far better suited you are not alone.