3/15/2010
by: Joseph Page
Topic Views: 1278

Office Action

How will the Patent Office respond to my application?

Office Action

     The first Office Action for most inventors is a bit surprising. It generally includes rejections of all claims. This is completely normal and is done intentionally with good reason. One of the primary issues which surprises an inventor upon considering the first office action is that the cited art may seem to be very different that the invention. Some lessor-experienced inventors become a bit agitated while reading an examiner's action because it may be very hard to follow the examiner's reasoning when plainly the inventions are strikingly different. The process is intentionally 'adversarial' and it is necessary for the Patent Office to try to develop a strong position against patentability for the process to work properly. Be patient. Your patent attorney will know how to properly answer the examiner's position.

     When an inventor is asked to comment about an Office Action, they typically enumerate the differences between their invention and the cited art. This can be a waste of time. In the first stages of patent examination, there are often many issues to settle which are more of a legal nature than of a technical nature. If an inventor develops a lengthy technical explanation of the differences, it might be quite premature. All legal issues should be settled before giving consideration in earnest to the technical differences. For this reason, an inventor should remain quite patient and resigned to the process until it matures and reaches a point where technical differences will be considered in more detail. It will be good advice to inventors regarding their first Office Action to avoid getting too excited about initial claims rejections – they are often very weak and easily overcome. A skilled patent attorney has a long list of legal arguments which need to be 'tried' against the Office Action prior to starting the 'technical differences' portion of the argument. A first answer to an Office Action often also includes technical differences argument, but that is not always where the greatest attention lies.

Some basics
     Rejections are almost always in either of three categories including: novelty §102; obviousness §103, and written description §112.
'Anticipation' Rejections – 35 USC §102
     If you get a rejection under section §102 'anticipation' – the examiner is basically saying: your invention is not new – it has already been done – exactly. This means, the cited art precisely includes everything which is in the claim being rejected. (Claims are rejected on a claim-by-claim basis – each having its own basis for rejection). If there is a difference – no matter how small – the claim must be rejected under §103 instead of §102. It is not easy to find art which exactly or identically matches a claimed invention. Consequently, rejections under §102 are sometimes easy to defeat. Certainly, it is easy to modify a word or two in a claim to distinguish the claim from the cited art in the event that the art does identically describe that which is claimed.

'Obviousness' Rejections – 35 USC §103
     This is a much more complex rejection. This rejection is made when the patent examiner finds there are some differences – but that those differences are very small or insignificant – or 'obvious'. Keep in mind, the meaning of the word obvious in English is different than the meaning of same word in patent law. In English, we just shrug our shoulders and declare: 'that's obvious!'. This is not how the patent office reaches their conclusions of obvious – albeit some examiners seem to think this is how it is done. In patent law, to determine whether or not something is 'obvious' we must apply a pretty complex test found in Graham v. John Deere Co. It is pretty hard to apply it well. If an examiner fails to apply it properly, then the Applicant can fight the rejection based upon examiner's failure to properly set forth the rejection in accordance with law. This is not very interesting stuff for most technical minded inventors. Legal pushing and shoving based upon case law is sometimes difficult (actually boring may be more like it) to read. It appears to be a bunch of mumbo-jumbo to most decent and clear thinking scientists – it often appears to be quite off the point of the claimed invention. If your patent attorney seems to be submitting a bunch of mumbo-jumbo and is not focused on all the wonderful reasons why your invention is better than the one cited by the examiner, then he is probably doing things right. Be patient, after all those issues are cleared up – the examination process will finally arrive at the technical differences between the citation and your invention – or you will be granted a patent – because the examiner already understands the technical differences.

Written Description – 35 USC §112
     Don't worry too much about these rejections. They are almost always directed to simplistic errors – like spelling or grammar. They might be related to other technical faults with the writing of the application. In some very rare cases, these rejections could be serious. If you fail to put forth an adequate and detailed description of the invention, you might suffer a fatal 112 rejection which cannot be repaired. For this reason, the initial filing should be very nice, detailed and complete to support the claims which follow. Most of the time, §112 rejections are quite easy to repair.
     Don't get overly concerned with the first office action unless the art cited by the patent examiner is very similar to your invention. In this case, you should consider carefully all of the differences between your invention and the prior art citation. These differences will help your patent attorney devise a good answer going forward. If the cited art looks very different from what you've invented, your patent attorney will prepare the correct legal response to the examiner and finally arrive at good patentable claims. In either case, you should expect the first office action to include a rejection to all claims. The strength of the rejection is the real concern – and that nearly always depends upon the similarity between that which you have claimed and the cited art. If the art developed is not similar – then you have good reason to be happy – despite all claims rejected.

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