We focus on drafting and filing Responses to Office Actions for utility patent applications. The refusal to grant claims because the subject matter as claimed is considered unpatentable is called a “rejection.” If the form of the claim (as distinguished from its substance) is improper, an “objection” is made.

Claim Rejections

An Office Action from the United States Patent and Trademark Office may state that claims of a patent application are rejected (not patentable) for various reasons.  Typical rejections include the following:

• 35 U.S.C. §101 Rejections
  • Double Patenting Rejections
  • Subject Matter Eligibility Rejections
    • Examiner Guidance
• 35 U.S.C. §102 Rejections
  • Resources
    • MPEP 706.02
    • MPEP 706.02(a)-706.02(n)
    • MPEP 2131
• 35 U.S.C. §103 Rejections
  • Resources
    • MPEP 706.02 
    • MPEP 706.02(j) – 706.02(m)
    • MPEP 2141 -2146
• 35 U.S.C. §112 Rejections
  • Resources
    • MPEP 706.03(c) – 706.03(e)
    • MPEP 2161-2181

Claim Objections

An example of a matter of form as to which objection is made is dependency of a claim on a rejected claim, if the dependent claim is otherwise allowable. See MPEP § 608.01(n). The practical difference between a rejection and an objection is that a rejection, involving the merits of the claim, is subject to review by the Patent Trial and Appeal Board, while an objection, if persisted, may be reviewed only by way of petition to the Director of the USPTO.

• MPEP § 706.01

Practice Tip

1. While adding additional features to a patent claim may advance prosecution, in some instances, only a minor modification or a generally non-limiting amendment can be made to change the Examiner’s interpretation.  For example, a patent examiner may interpret a feature of a reference as the same feature in a claim.  If the two features are different, and the practiced invention would necessarily include the feature of the reference, then by including the feature of the reference in the claim, the Examiner will need to reconsider the original interpretation.
2. Avoid a first action final rejection in response to an RCE by filing an amendment after final and receiving a favorable advisory action.
3. Avoid a first action final rejection in response to an RCE by including a new claim – dependent or independent – in your filing – the new claim must include features not disclosed or taught by the prior cited references.