[00:00:00] Hello and welcome to the Patent Pending Made Simple podcast. I'm your host, Summer Shaw, and with me is Jamie Brophy. Jamie, how are you? Hey, Summer. I'm good. I'm happy to be back on with you today. We had a little bit of a break with summer plans and family stuff going on, but we're back and it's good to be recording again.

How are you doing? I am doing all right. I hear that you had a pretty epic summer break here. So maybe we'll get into it one of these days, but glad you're back and glad to be recording with you again. Yeah, definitely. All right. So today's topic is the type of rejections that you Could potentially get if you file a patent application with the patent office As we all know and maybe some of the listeners know that the patent office can be quite picky About what they consider to be an appropriate patent application And there are a whole host of rejections that they can issue to you depending on where you might [00:01:00] have messed up, so i'm glad we're getting an opportunity to talk through some of these because I imagine that a lot of our listeners are pro se inventors are filing their own bad applications and maybe they have received some of these rejections and they're, maybe looking at those rejections that are saying, what does this mean?

And how can I overcome this? What did I do wrong? I'm glad to be able to get into this with you. Yeah, I think this is going to be a really helpful topic, and we've mentioned this, I'm sure, several times before on the podcast, but usually when you file a patent application, most of the time they get rejected, and probably, 90 percent of the time the patent applications get rejected for one reason or another and like we'll discuss the patent office has Many different options for rejecting an application So it is very common and totally normal to get a rejection when you file a patent application Yeah, and most of these rejections are not fair Fatal to your application.

So there is a mechanism at the patent office to respond to all [00:02:00] or most of these and fix whatever defects that might have been discovered in your application. So if you do receive a rejection, I would say, calm down, think about it objectively. It doesn't mean that you will never be able to get a patent, that your invention is not patentable at all.

It usually means that there's a problem and then the patent office expects you to address it and fix it. Yeah, that's right. And we would call this part of the patent application process prosecuting the patent application. And you have the opportunity to amend the application to some extent. You definitely can amend the claims.

Sometimes there's just informal matters that need to be fixed. So yes, getting a rejection, it's not the end of your patent application. That's right. So with that, and maybe one other copy out here is that in today's episode, we're not going to get into the meat of how to respond to these rejections.

The goal of this particular episode is to just go through these rejections and what they mean. And [00:03:00] in a later episode, Jamie, we're going to talk about how we would answer some of these rejections or how we would try to overcome some of these rejections. Yeah, definitely. We're probably gonna have to do this in a few different parts to talk about all the different kinds of rejections you can get.

Today, the plan is to focus on rejections that you get based on prior art, but there are all kinds of different rejections you can get. Do you, should we list those out a little bit, Summer? Yeah, let's do that. I'll take a stab at this and then we'll focus in on a couple of these, like Jamie mentioned. So the most common substantive rejections that you get Are called art rejections as Jamie mentioned they are usually referring to section 102 and section 103 And 102 and 103 really refers to statutes within the patent act It's a act that Congress has passed and the section numbers are sections of the Patent Act or different laws that Congress has [00:04:00] passed over the years.

Section 102 is usually referred to as a novelty objection. That means that there is something else out there that is exactly like your invention. And 103 refers to a non obviousness rejection, which means that there is a combination of things that are maybe like your invention. Jamie, did I do justice to these two rejections here?

Yeah, I think that's accurate. I think it's also important to point out when we're talking about 102 and 103 rejections, the examiner is Not necessarily taking into account every single feature of your invention that you talk about in your application, they are focused in on the claims. So they are specifically rejecting the claims and what you have stated in the claims as being part of your invention.

Yep, that makes sense. Okay, so the next set of rejections that you may get, and we're just going to do this quickly, they're called 112A, 112B, and 112C. They're indefiniteness rejections. Jamie, do you want to take a stab at explaining these? Yeah, so [00:05:00] your claims cannot be indefinite. And indefinite just means, if you're using language in your claims like such as, or for example, that would be considered indefinite because your claim doesn't definitely Recite this feature if you're using the term, for example, in it.

So indefiniteness would be a 112B rejection. 112A has to do with making sure that every feature in your claim is supported in the specification. If you have something in your claim that you don't talk about, or at least mention in the rest of the application, you're going to get a 112A written description rejection.

Very good. And I think those are the rejections that you'll see most often. 103 is by far the rejection you'll see most often. And then it's typically 102, and then 112B, and then a few of these other ones taper off. I think that's a good description of 112 rejections. The other rejection that you might see is a section 101 rejection, which means [00:06:00] that you're trying to patent something that is not patent eligible.

So the United States Congress in the Patent Act has defined categories of materials that are patentable. And if you're trying to patent something that doesn't fall under one of these statutory categories, then you'll get a 101 rejection. Let's say you're trying to protect a piece of artwork with a utility patent.

Then you'll typically get a 101 rejection. And the one on one rejection becomes more prevalent in certain areas. So in the software space, you'll typically see a one on one rejection in reference to the Alice case, which means that you're trying to patent a piece of software that could be performed in the human brain.

And that's usually a basis for rejecting your patent application. In the biotechnology space, you'll see a one on one rejection with reference to the Mayo case, and we will get into both of these cases in a future episode, but those are basis for rejecting your application. And then the last set of rejections that you'll see, bear with us here guys, is it's called an [00:07:00] ex parte quail rejection, section 171 rejection.

There is the double patenting rejection, and then there's a restriction requirement. Jamie, do you want to quickly run through those? Sure, so ex parte quail usually means that there's some sort of formal matter in your application that needs to be fixed before the patent office can allow it. Ex parte quail usually means you're pretty close to getting your application allowed, there's just these few things you need to fix up, is what I've typically seen.

Do you have anything to add about ex parte quail actions, Summer? No, that's pretty good. It also usually means or always means that prosecution is closed on the merits of the case. So the patent examiner believes that there are, there are no more substantive issues. All that's left are non substantive issues.

So that's all that you have to resolve at that point to get the patent allowed, but prosecution has officially closed. So you can't bring in new evidence typically. If you wanted to do that, you'd had to file an [00:08:00] RCE or there are some other mechanisms for reopening prosecution. But you are done, you just had to fix those things to get an allowance typically. Yeah, good point. The next one I think you mentioned was double patenting. Double patenting means pretty much your exact claims are copied somewhere else. So I see this often if we file a continuation application and we have left the claims pretty much untouched. We'll get a double patenting rejection, and there's a few ways to overcome them.

You can amend your claims, or you can file a terminal disclaimer, and that just means that you're disclaiming the end part of the life of your patent. And we'll get into all that stuff later on when we talk about these rejections in more detail. And then restriction requirement means that the examiner thinks you have more than one invention in your claims, meaning that you have one claim set that's directed at one invention and another claim set that's directed at another invention.

I see this a lot when you have claims directed at the [00:09:00] device and you also have another set of claims directed at like the method of using the device. The examiner would usually issue a restriction requirement. to make you pick one of those, or you might get a restriction requirement if you have a few different embodiments in your application, just different permutations of the same invention, and they want you to choose one of those embodiments.

That's generally what happens with a restriction requirement. How did I do, Summer? Do you have anything else to add? No, I think this is about as good as anyone can do. There are lots of nuances that I'm sure we'll get into it at some point with double patenting rejections. There, there are these things called statutory double patenting rejection and non statutory or obviousness type double patenting rejections, but we'll get into it in a future cast.

I don't want to get us too far off track, but I think that's a great explanation, Jamie. Yeah, like we mentioned, I think today we'll just talk about mainly 102 rejections and 103 rejections. Summer already talked about utility [00:10:00] or 101 rejections a little bit, and we might get into more detail there.

But, yeah, should we go ahead and get started on 102? Yes, let's do this. Before we jump into it, Jamie, can you talk a little bit about the timing of these rejections or the timing of preparing a response to these rejections? Yeah, definitely. In general, when you get a rejection, you have three months to respond.

That would be your first deadline for responding. That deadline is extendable if you pay a fee and each month that you extend the deadline is an additional fee. And you can extend it for Up to six months. So six months would be your, what I call your drop dead deadline. Once six months have passed since you got your rejection, your application would normally be considered abandoned.

Okay. And I'm trying to think of exceptions to that, but I can't really think of anything. There are different flavors of these rejections. There's the non final 102 rejection and a [00:11:00] non final 103 rejection. And they have slightly different deadlines or they have essentially the same deadline, but different terminology that the patent office likes to use.

So typically you will see some language in the rejection that a non final rejection has to be responded to in three months and can be extended by payment of fees. With the final rejection, they say you have two months, but can be extended. But really it's Three months can be extended up to six months Jamie? Yeah. I try to respond to final rejections within the two months. Once you get a final rejection, prosecution is essentially closed except for certain amendments that you can make. So it's a good idea to respond within that two month time frame in case If the examiner decides not to enter your amendment, then you would want to reopen prosecution by filing a request for continued examination.

And if you can file that request, which is also called an RCE, within the three months, you [00:12:00] don't have to pay the extension of time fees. So I think that's why they normally recommend two months. That's right. Yeah, don't let that freak you out here You know, if you were responding to the rejection yourself, you're probably gonna want to do it as quickly as possible If you're working with an attorney or a practitioner, they're probably going to respond around the three month mark most attorneys have a pretty full docket So they're not chomping at the bit to get something responded to You What we typically do is we put it in our docket, we do have a backlog and then we usually call the examiner and talk to them and then we'll put the response together and then we'll talk to the client and update the response if we need to.

So it's a process. Usually when you're working with outside counsel, they'll walk you through it, you shouldn't expect them to respond to a rejection in a couple of weeks. It's going to take. That's right. Yeah. I usually respond right around that three month mark. Sometimes we have clients that are in some kind of situation where they have somebody [00:13:00] that might be a potential infringer or they have a lot of competitors coming onto the market and they're.

Anxious to get that patent allowed in that case. I would probably respond, try to shorten the prosecution and respond as soon as possible. But yeah, in general, I'm right around that three month mark. Yeah. Somebody did an analysis or study about when responses come in. And basically the graph was hovering right around 0 percent at the one month mark and the two month mark.

And even at the three month mark. Most responses are filed, like there's a huge spike of the day of the deadline and a couple of days before the deadline. So that's usually when most people are filing their responses. So that makes sense. I'm glad to know I'm in that normal zone. Yep. Yep. Just like patent attorneys like to work the way college kids study for exams, cram.

Although I don't think we do that. There's a lot of legwork that goes into it is typically you're getting all your ducks in a row and then [00:14:00] getting something filed before the deadline. So I totally get that part of it. Okay. Let's talk about the substantive rejection and how you may respond to some of these.

I'll let you pick Jamie. Do you want to take the one Oh two or the one Oh three? Yeah, I'll talk about one Oh two. The one Oh two rejections. If you get. a rejection that is based on 35 USC 102, which is also called anticipation or novelty. The examiner has found a piece of prior art that they are saying has every feature that you've recited in your claims.

So they would say that your invention lacks novelty in view of this piece of prior art. And like I said, it's based on what's recited in your claims. So if your claims have feature A, B, and C. The examiner finds a piece of prior art that also has those exact same features A, B, and C. You can respond by amending your claims to recite something that is not taught in that piece of prior art or to add [00:15:00] more detail to some of those features that piece of prior art might not have some of that detail, or you can respond by arguing if you think the examiner is wrong.

Usually with 102s, we end up amending the claims. The examiners are usually pretty spot on with 102 rejections. Do you have anything else to add about 102s, Summer? Yeah, I would say that I think you're usually right in the mechanical arts and some other arts out there where the one or two rejections can be pretty spot on.

I would add that in my practice with software patents, I sometimes see one or two rejections that are way off and I will choose to argue those rejections and I pretty successfully and regularly overcome those one or two rejections. So it really. Depends on the art that you're in, but you're right, Jamie, in the mechanical arts you're most likely not going to overcome the 102 or the examiner has done a pretty good job in the software arts.

I think it, it could be hit or miss a little bit. [00:16:00] 102 usually means that, okay, this exact thing has been patented before so you can't get a patent on it, but it is important to read through the rejection. The examiner is supposed to recite each feature in your claims and then tell you where those features can be found in the reference.

And they might just say, Oh, this feature is in figure one. And they might refer to part of the written description that portion of the application that talks about that feature, but it's definitely important to go through it, see what the examiner had to say. There's always a chance that they missed something or ignored something.

So definitely read through it in detail and make sure that everything is there. But in general, I find that we usually have to amend the claims to get around those 102 rejections. Yeah, I think that's right, Jamie, and if you had to put a percentage number on it, what percentage of the time are you amending the claims and what percentage of the times are you simply arguing the [00:17:00] rejection?

Gosh, I would say probably 80 percent of the time I find I have to amend the claims to get around a 102. What do you think in your practice, Summer? Yeah, I would say it's around that. Maybe closer to 70%. It just depends on what the rejection is and how good a job they did to map the reference on to your claims.

So your point, Jamie, about reading these rejections carefully or taking them on a case by case basis is important because the examiners Get some things wrong sometimes and they get some things right sometimes as well. So you just got to pay attention yeah, and I think another thing also to note here is that the examiner is allowed to interpret the claim language as broad as reasonably possible.

So even if it looks like that reference might not recite a feature that you have in your claims, that could be because the examiner is giving that claim language a broad interpretation that's not an interpretation that you intended, but the [00:18:00] examiner The examiners can do that. They're supposed to interpret the claim language as broad as reasonably possible.

So it's also important to try to understand where the examiner might be coming from and how they might be interpreting that claim language. That's right. And if you are amending the claim, Jamie, to overcome the 102 rejection, what kind of things are you typically looking to do? And I guess this part of the podcast Our disclaimer should apply doubly that this is not attorney advice, but this is for the listener's education or edification here.

But if you were to look to amend the claims, how would you go about doing that? Or what's your framework for doing that? So I would read through the reference that the examiner is citing as a 102 reference and try to identify some features of your invention that define over that reference. And if those features are not already recited in your claims, then I would amend the claims to [00:19:00] add that feature to your claims.

Or if you think they are recited in your claims, you might need to add some more detail about that feature in the claims. So the strategy that I usually incorporate is to, like I said, review that 102 reference, read through it in detail, and then and try to identify, one or two things that are important parts of your invention that would define over that device or apparatus that is taught in that piece of prior art.

Yep, that makes sense. That's what I would do. One thing that I used to always get hung up on when I was a junior attorney, when I was a first year associate, I would try to think of amendments that would not be present in the reference cited. But then I would get in my head about what if the examiner finds this somewhere else?

Or what about that? And then I would end up over amending the claims or, where do you draw the line between overcoming the rejection on hand versus overcoming future rejections that may not have been issued yet. Yeah, all you can really do is take into account the references that have been cited in the application so far, [00:20:00] in addition to the references that the examiners cite in the rejection, they might cite some additional references.

So if there's a feature that you. Discussing your application that's not in the claims. There's a possibility that the examiner is still going to search for that feature or find that feature And that could be in some of those additional references cited When you get the rejection you'll get a page attached to that is the examiner's list of references cited Make sure you look at all of those and all you can really do is Make sure that your amendment is going to overcome everything and all of the references cited.

Yeah, that's a good point. You got to look at all the other references. Don't just overcome the 102 reference. Make sure your claim is distinguishable based on everything that the examiner has cited and everything that you're aware of and you have cited in your own application. So you need to do both even though the rejection may not have been framed that way per se.

Yeah, absolutely. I think that about covers it for 102 [00:21:00] anticipation rejections unless you have anything to add, Summer. No, I think you did a really good job there. I'll try to do a similar job hopefully on the 103, but 103 rejection usually refers to an obviousness rejection. This is the one where the examiner didn't find one singular reference that teaches all of your claim elements, but instead had to look at a couple of different references and had to combine them to get to your invention.

And it doesn't always have to be a couple of different references. Sometimes the examiner can take one reference and combine it with his or her understanding of the field of art. and take some liberties that way to get to an obviousness or a 103 rejection. But essentially what you're looking at when you look at a 103 rejection is a combination of things that are used to stitch together to reject your claim.

Yeah, I think you did a great job, Samrith. I think that covers it. Yeah, in a 103 rejection, the examiner is [00:22:00] usually taking a, what we would call a primary reference and saying, looking at that primary reference in view of a secondary reference. And when I say reference, Prior art, it could be a patent, it could be a published patent application, it could be a journal article, anything that is disclosed, and it's usually a document of some sort that the examiner is relying on in the rejection.

So in a 103 rejection, the examiner takes the primary reference, reviews it in view of the secondary reference, and says it would be obvious to modify. that what the apparatus that's taught in the primary reference with some of these things that the secondary reference teaches. I don't know if I clarified anything that you just said, but just a different way of saying it.

No, I think this is great. I, I think having two different perspectives on a lot of these things and saying it two different ways that I think is very helpful because some people may hear things differently, even when we're saying the same thing, Jamie. So I think that was very helpful. Okay. So we got a one of three rejection.

How [00:23:00] would you go about trying to overcome it? Jamie, do you have a framework or rules of thumbs for it? Yeah, I think similar to the 102 rejection, I first of all review those references to make sure that they are really teaching the elements that are recited in the claims as the examiner is alleging. So first of all, making sure that those elements are there and if they're not, then you can argue against that rejection.

If the elements are there, then you also need to look at, okay, Does it make sense to combine or to modify that primary reference with these elements from the secondary reference? Is it physically possible to make that modification? Would somebody be motivated to make that modification for some reason?

There's a lot of different ways to respond to 103 rejections, but I think the first thing is that, is making sure that the 103 rejection is sound, that all of those elements are found in the references, and that it does make sense. to combine the references in the way that the examiner is [00:24:00] proposing. And if all of those are met then you're back to amending the claims most likely.

That's right. One of three rejections can be really tricky. And I guess, Jamie, it's my turn to repeat what you have said, maybe slightly differently. But I try to do the same thing. I try to think about, okay is what the examiner's saying Is here in these references, is it actually there or did they miss something or they misinterpreting something, right?

And if they have, then that's usually a good place to start and say it doesn't actually exist in these references. And I think that would be a good response to a rejection. The other thing you can do is if the combination of elements are in these references, then you may want to try to amend the claims again, here to add a new element.

That is not disclosed in any of the cited references. So pretty much the same process as what we talked about in the 102 response section. The third option, and this is where things get really tricky, is there is a fact based analysis here, right? A [00:25:00] 103 is a combination of A legal rejection or requires legal analysis as well as a factual analysis because it's not just about whether something is there or not, right?

That's the legal part of the analysis, I would say, but also whether these things can actually be combined in the way that the examiner is proposing that they can be combined. So you have some options here, and I would say All of these are not my preferred way to respond to a 103 rejection, so I'll add this as a caveat.

But sometimes those are the ways you have to go, depending on how the case is. But often I think of these arguments as break in case of emergency type of arguments, because they are so fact based that it would be easy for an examiner to disagree with you, or may require you to put forth some additional evidence to support what you're saying.

But you could say that a Person of ordinary skill in the art so standard that the examiners have to use to combine references That a fictitious [00:26:00] person would not combine these references because they come from different fields of art Or because they solve different problems, right? So you could argue That you can't combine these references.

You could argue that the references actually teach a solution that teaches a way or teaches in a different direction than your solution. So those are some things you could do. The other thing you can do, if you are able to produce some evidence, You can show that your product that is covered by your claims was very commercially successful and that's evidence of non obviousness.

The federal circuits or our court systems were a little weary of the potential for. What's called hindsight bias when you combine things. So this is the concept where when you look forward, things are disparate and unique, but when you look backwards, things, it's obvious that these things fit together, right?

So there are some ways for you to combat that hindsight bias. And you can do that by [00:27:00] showing evidence of commercial success and a few other things. So you can get into that argumentation with the patent office. But you got to be careful, right? Because there is some possibility that you might get into a, he said, she said type of an argument with a patent examiner where you may argue something and the examiner may come back and say no, I don't see it this way.

I see it differently. I see that a person of orientation on the art. Can in fact combine these references. So if you're going to go that route, be very careful. Try to present evidence if you can to support those arguments, because it's easy for an applicant to say people wouldn't combine these because I wouldn't combine the references, but the examiner can come back and say I think a person of ordinary skill in the art can in fact combine them and you got nowhere at that point.

Yeah, 103 rejections really can get complicated, and there's a lot of different things to take into account, so yeah, they are a little tricky. I will add that there are a whole bunch of things that you can argue to combat the hindsight [00:28:00] bias that Is present when you review these applications, when you review any invention after it has been invented, right?

Everything seems much more obvious once somebody has come up with it. But when you're coming up with something, things may not have been so clear or so obvious. So that is definitely a direction that you can go, but I would say, think of your first two options that we talked about before you get down this road, because it can get messy.

Potentially. Yeah, absolutely. And I think another thing, now that we're talking about 103 rejections and going back to our episode on what makes a good patent application, if there's something about your invention that you think is essential, that is not just a matter of design choice, then say that in your application, say I'm doing it this way, or I'm, Making it this shape because it has all these different advantages, or this is an essential part of the invention because of X, Y, and Z.

Make that clear in your application. [00:29:00] That'll make it easier to combat these 103 rejections down the road. Yeah, that's right. And this may be more of an advanced strategy thing, but I'll preview this here. And maybe we can unpack this in a later episode. But the other reason you don't want to get into a lot of what a person of foreign school in the art would do, or would somebody combine these references or those types of arguments is because it also muddles your prosecution history.

If you make some arguments to overcome a piece of reference, then that reference Cannot infringe your patent down the road. So you do want to be careful about how you're arguing things because what you say into the patent office to overcome your rejection could be used against you in a later litigation type of a scenario.

So it's a good way to avoid infringement. So to put this in more concrete terms, when I used to do litigation and my clients would get [00:30:00] sued on a patent lawsuit. One of the first things, and my favorite things to do, would be to look at the file history, right? To look at what the applicant said to overcome the 102 or the 103 rejection.

And then I would try to align my client's product to those arguments or those concessions that they made, right? Because that which cannot invalidate cannot infringe as well. Every time you're making statements in the prosecution or to overcome a rejection, you are also giving somebody a pathway to avoid infringement.

So you want to be careful about that as well. Yeah, that's right. We would call that prosecution history estoppel Summer? Where what you've said during the prosecution history of your patent application, when you do eventually get a patent, that prosecution history, that's You know, any arguments you've made, any amendments you've made, those are part of the public record of your patent application.

So those can be taken into account during some possible infringement or [00:31:00] invalidity lawsuit that you might later go through. That's right. So be careful about that. I think that may deserve its own episode, but that's one of the reasons why you'd want to avoid creating a messy Trail or a prosecution history around your pan application I would try to find the best and the clearest path to overcoming these references Instead of the most circuitous or the most messy pathway even though they both may result in a patent The value of the patent at the end of the day may be very different depending on what's what you've stated in order to get the patent Allowed that's right Yeah, a lot of things to take into account just to step back more about 103 rejections as far as obviousness goes things like changes in shape or changes in size or changes in material.

Those are things that are generally going to be considered obvious by the patent office. But in addition to changes like that, there's changes where you've incorporated, like [00:32:00] we discussed earlier, where your patent seems to incorporate features from a few different references and combine them in this way.

And the question is whether the way that you've combined those features is obvious or whether you've combined them in it. a unique way that nobody would have thought of by looking at the prior art. So just to clarify a little bit more about what a 103 obviousness rejection is. Yeah, I think this is trick it may trip some people up, right?

I remember working as a law clerk when I was in law school. I was trying to respond to obviousness rejections and I was like what is obvious? Is it obvious to me and to whom, and It can get tricky, right? Just because of the terminology used here, but in practice, if you're able to show that a reference or a combination of references have a, B, and C, but your claims have a, B, C, and D and E, for example, then you may be able to show that, Hey, this is not disclosed in any [00:33:00] combination of references and therefore it's patentable.

So that may be. One way to think about this is you don't always have to get into tricky semantics about is it obvious or not, but if you can find one element of your claim that's not in any of the references, then usually that's a good starting point for a response or an amendment. Yeah, definitely. Yeah, I think this was a good primer on 102 and 103 rejections.

Is there anything else you can think of that we should discuss, Summer? No, I think this is good. I'm gonna go get some whiskey after this. Just thinking about some of these rejections has made me anxious and angry already. Yeah, definitely. I hope we didn't overwhelm everyone, but I think this is very interesting and helpful.

So I don't have anything more to add. We'll come back and talk about some of these other rejections. In the future cast as well. Yeah, definitely. I think we've talked long enough today and we'll have to talk about some of those other things in later episodes. But yeah, hopefully this was a helpful episode.

Talk about those art [00:34:00] rejections. Yep, I agree. All right. Thanks, Jamie. And thanks everyone for listening. Okay. Thanks Summer. Thank you for joining us on the Patent Pending Made Simple podcast. I hope you enjoyed our show. If you'd like to receive updates, view the show notes, or access a direct link to any resource, go to the episodes page on patentpendingmadesimple.

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