Learn the arguments for patentability of your invention to convince the examiner to grant you a patent on your invention.
Overview of Office Actions
Contents of an office action An Office Action generally refers to a document generated by an examiner at the Patent Office and mailed to an applicant regarding: 1) the rejection or allowance of … [...]
What is a request for continued examination and when should you file one?
A request for continued examination (aka RCE) allows a patent applicant to continue the examination of their patent application after patent prosecution (or examination) on their patent application has ended. For example, upon receiving a final office action, patent prosecution has ended. However, upon filing an RCE, the prosecution of the patent application is opened […]
What is an advisory action?
An advisory action is mailed to the inventor when they file a response to a final office action without a request for continued examination (RCE). When the office action is made final, the examiner does not need to consider any of the inventor’s arguments or enter any claim amendments. The advisory action only informs them […]
How to respond to a final office action?
A final office action indicates that a patent application has been rejected twice. The examiner does not need to consider further amendments and arguments. However, there are ways to continue the examination. This article will also cover a basic strategy for responding to a final office action. What is an office action? An office action […]
Teach away argument for patentability requires more than a preference away
Meiresonne v. Google (Fed. Cir. March 7, 2017) stands for the proposition that a proper teach away argument to defeat of obviousness rejection requires a discussion in the prior art of more than just a preference away, disparagement or being critical of the combination suggested by the examiner to make the claimed invention. A proper teach […]
Detailed explanation for motivation to combine required for obviousness
Summary A proper rejection on obviousness requires that the examiner show how one of ordinary skill in the art would have been motivated to combine two or more prior art references to make the claimed invention. In Personal Web Technologies v. Apple (Fed. Cir. 2/14/17), the Federal Circuit held that the Patent Trial and Appeal […]
Prior art must disclose EVERY limitation for a proper anticipation rejection
For an examiner to reject a claim based on anticipation, each and every limitation must be found either expressly or inherently in a single prior art reference. An anticipation rejection is a rejection where the examiner is of the opinion that the claimed invention is not novel. However, the United States Patent and Trademark Office […]
Common sense used to evaluate obviousness with caveats
In Arendi v. Apple (Fed. Cir. August 10, 2016), the Federal Circuit held that the use of common sense during examination of a patent application is permitted with at least three caveats. To the layperson, this statement may sound strange. In the law, words are defined and have different standards to determine if the facts […]
Broadest reasonable interpretation does not mean broadest
During the examination of a patent application, the patent examiner reviews the claims to determine whether the claimed invention is novel and non-obvious in light of the prior art or existing technology. In order to review the claims, the examiner interprets the claim limitations and attributes the broadest reasonable interpretation to each of the claim […]
Teach away arguments to show non-obviousness
I. Generic Obviousness Rejection Showing that a prior art reference teach away from a particular combination suggested by an examiner is a way to show the non-obviousness of the invention. During patent prosecution, an examiner may cite two or more references, the combination of which in the examiner opinion makes the inventor’s claimed invention obvious, […]
How to disqualify non-analogous references cited in an office action
In an Office Action, the Examiner may cite to one or more patent references or other documents collectively known as the cited prior art. This is the body of prior art references that the Examiner is utilizing to say that the invention is not novel or is obvious in light of the cited prior art. […]
Restriction requirement and potential responses to them
A restriction requirement is an assertion by the examiner that the claims of a patent application are directed to two or more independent and distinct inventions. See MPEP Section 803 for more information. A common restriction requirement is between claims for an apparatus and those claiming a method of using the apparatus. The examiner will […]