Office Actions: Rejections versus Objections

A rejection means that the examiner will not allow the claimed invention based on its merit. The examiner is rejecting the claims as being ineligible for patent protection, not novel or not new, obvious, or indefinite. An objection means that the technicalities or formalities of the patent application are incorrect.  They need to be fixed before the patent application can mature into a patent. All rejections and objections must be resolved before your claimed invention is allowed to mature into a patent.

What are the types of rejections in an office action?

A claim in a patent application can be rejected for one of the following rejections:

1. The invention is not eligible for patent protection (Section 101).
2. The invention is not new (Section 102).
3. The invention is obvious (Section 103).
4. The invention as claimed is indefinite (Section 112).

How do you respond to a rejection that the invention is not eligible for patent protection?

You need to argue that your invention is directed to a process, a machine, manufacture, or composition of matter. The Patent Office will grant patents for these types of subject matter. However, oftentimes, this rejection arises when you are trying to get a patent for software. The courts and the Patent Office consider software to be an abstract idea that is ineligible for patent protection.

The Manual of Patent Examining Procedure gives you the analysis you need to follow to argue that your software claim isn’t just an abstract idea but that it’s a patent-eligible process or machine.

1. MPEP 2106.03

How do you respond to a rejection that the invention is not new?

You need to argue that the prior art does not disclose one or more elements or limitations in your claim. Typically, in order to make this argument you would have to narrow down your claim to distinguish your claim from the prior art. For example, if you initially claimed metal you could later narrow your claim to aluminum if the prior art only disclosed steel.

You need to review your patent application to see how you can narrow your claims. You can only narrow your claims to the extent that your existing specification currently describes the detail of how you want to narrow your claim. This is why you need to preload your application with all of the details. Otherwise, when it comes to responding to the office action, you’ll find yourself having a difficult time doing so.

How do you respond to a rejection that the invention is obvious?

You need to argue that the base reference would not be modified by one of ordinary skill in the art with the teaching reference. The base reference is the first reference identified by the examiner. It’s often the starting point at which the analysis for obviousness starts. The teaching reference teachers how to modify the base reference.

Many arguments exist to show why a combination suggested by the examiner is not obvious. For example, if the base reference says that aluminum cannot work and that steel must be used, it isn’t obvious to change steel to aluminum. We would say that the prior teaches away from modifying the base reference two aluminum.

You can find numerous arguments in MPEP 2145.

How do you respond to a rejection that the claim is indefinite?

You need to amend the claims so that the claims are clear. for example, if you introduced a claim element with the word THE, you may need to simply change the introductory word to A.  Read more about the proper use of A, THE, SAID.

How do you appeal claim rejections if you cannot resolve the issue with the examiner?

Claim rejection can be appealed if there have been two or more rejections. You need to appeal the claim rejections to the Patent and Trademark Appeal Board.

Once you get your second rejection, you can file a Notice of Appeal. Within two months, you need to file an appeal brief.

Typically, we do not recommend appealing the case unless you cannot resolve the matter with the patent examiner. For example, you can hold a telephonic interview with the examiner to better explain your claim amendments and arguments.

If all else fails then you may want to file the appeal.

What are the types of objections in an office action?

During the examination, the office of initial patent examination or the patent examiner may object to one or more formalities of the patent application. The types of technicalities that the Patent Office would object to any patent application or as follows:

1. The patent application does not contain a description of each of the drawing figures.
2. The claims of the patent application are not sequential or the dependencies are in error.
3. The drawings have not been submitted in clear solid black lines.

How do you respond to objections from the patent examiner?

In most instances, responding to objections is easy. All you need to do is, in most cases, implement the suggestions provided by the examiner. However, you do need to take an independent review and assess whether the examiner’s suggested change is correct.

How do you appeal objections made in an office action?

To appeal an objection, you need to do so with the Director of the Patent Office by way of a Petition. In the vast majority of cases, you should be able to resolve the issue with the examiner. If you cannot, you may have deeper problems and may need to switch attorneys or retain one to help you.