A Section 112 rejection in a patent Office Action means that the examiner considers certain claim language indefinite. The good news is that, in most cases, indefiniteness under Section 112 may be resolved by a fairly simple response correcting whatever objections raised by the examiner.
How do you overcome 112 rejection?
- Avoid using relative and exemplary terminology which may render the claims indefinite.
- Ensure that claim terms have proper antecedent basis in the claims and specification.
- Be aware of claim term meanings which may adversely impact claim breadth and scope.
What is the difference between enablement and written description?
Perhaps the key to understanding the difference between enablement and the written description requirement is that you can bootstrap knowledge of one of skill in the art into your application for enablement purposes, but no such bootstrapping is allowable under the written description requirement.
What is the written description requirement?
“The ‘written description’ requirement implements the principle that a patent must describe the technology that is sought to be patented; the requirement serves both to satisfy the inventor’s obligation to disclose the technologic knowledge upon which the patent is based, and to demonstrate that the patentee was in …
How do you argue a 102 rejection?
The three main ways to overcome a 35 UCS 102 rejection include 1) invalidating the prior art, 2) arguing the prior art doesn’t teach the claimed limitation, 3) amending the claims. As a patent attorney, I prefer to try to overcome the prior art in the preceding order. 1) Invalidating the prior art.
What is a 101 rejection?
If your application has received a Section 101 rejection (sometimes referred to as a “subject matter eligibility” or “Alice” rejection), that means the examiner believes that your claims relate to a type of invention that is ineligible for patent protection.
How do you overcome an enablement rejection?
To overcome a prima facie case of lack of enablement, applicant must present argument and/or evidence that the disclosure would have enabled one of ordinary skill in the art to make and use the claimed invention at the time of filing.
What is the enablement requirement?
In order for an application to be complete the invention must be enabled. What this means is that the disclosure must explain enough about the invention so that someone skilled in the art can both make and use the invention.
Is Enablement a question of law?
Enablement, on the other hand, is a question of law based on underlying factual findings. To meet the enablement requirement, according to somewhat older case law, a patent specification must teach one of ordinary skill in the art how to make and use the invention without undue experimentation.
Are most patents rejected?
Approximately 90% of utility patent applications will get rejected. Utility applications often receive multiple patent rejections. So do not be disappointed. Rejections are the norm for utility patents.
What happens if your patent is rejected?
When faced with a patent rejection after properly filing your application, you have the right to appeal the decision. Filing an appeal requires an official form from the U.S. Patent and Trademark Office along with the appeal fee. A written brief is also necessary, explaining your position against the rejection.
Why are most patents rejected?
Lacking novel quality is the top reason why patents get rejected. The main reason a patent doesn’t pass the novelty test is if the invention is not the first of its kind. The examiner will provide a rejection letter and cite the “prior art” if the invention is not unique enough.
What is undue experimentation?
undue experimentation, the court examines (1) the quantity of experimentation; (2) the amount of direction or guidance present; (3) the presence or absence of working examples; (4) the nature of the invention; (5) the state of the prior art; (6) the relative skill of those in the art; (7) the predictability or …
What constitutes new matter in a patent application?
New matter in a patent application typically refers to something recited in the claims that is not supported by the specification. It can also refer to a description that an applicant tries to add to the specification that goes beyond the scope of the original disclosure.
What is enablement in patent law?
Sufficiency of disclosure or enablement is a patent law requirement that a patent application disclose a claimed invention in sufficient detail so that the person skilled in the art could carry out that claimed invention.
How do you overcome 103 rejection?
In conjunction with the claim amendment, you can argue that the combined prior art references fail to show the new claimed combination. Teaching Away: Another way of arguing against a §103 rejection is to analyse the prior art references closely and find if the prior art teaches away from the combination.
Can you swear behind a 102 reference?
Applications and patents that fall under the pre-AIA version of 35 USC § 102 can disqualify a reference that is not a statutory bar under § 102(b) by proving an earlier date of invention. In accordance with § 102(g):
How often are patents rejected?
The USPTO gives a non-final rejection to 86.4% of applications submitted. This leads to amendments and continuation procedures to create related applications. When your patent application gets rejected, you will have to spend more time and money to address the issues raised by the USPTO.
How do you argue a 101 rejection?
- Explain how examiner failed to properly apply step two of the test.
- Identify elements where inventive concept can be found.
- Argue that claim elements are not well-understood, routine, and conventional.
- Argue additional claim elements improve computers or technology.
What is the Alice Mayo test?
Step 2, which is the Supreme Court’s Alice/Mayo test, is a two-part test to identify claims that are directed to a judicial exception (Step 2A) and to then evaluate if additional elements of the claim provide an inventive concept (Step 2B) (also called “significantly more” than the recited judicial exception).
What is and what is not patentable subject matter?
An actual invention that includes a disembodied idea, a scientific principle or an abstract theorem is not patentable unless the disembodied idea, scientific principle or abstract theorem is part of a combination of elements that cooperate together and that combination has physical existence or manifests a discernible …
What is a prophetic example?
Prophetic examples (sometimes referred to as “paper examples”) describe experiments that have not been performed and may also describe predicted or simulated results. A working example, in contrast, is one that describes work actually performed or experimental results actually achieved.
What does an enabling disclosure do?
It is settled law that a disclosure is made to the public even if it is only made to one person; a disclosure is an enabling disclosure if it allows a persons skilled in the field in question to work the invention.
Does prior art need to be enabling?
PRIOR ART IS PRESUMED TO BE OPERABLE/ENABLING When the reference relied on expressly anticipates or makes obvious all of the elements of the claimed invention, the reference is presumed to be operable. Once such a reference is found, the burden is on applicant to rebut the presumption of operability.
What must a patent disclose?
A primary disclosure or “specification” is a main document in a patent application. It describes the ways in which the invention is innovative compared to similar inventions and explains the scope of monopoly the applicant believes he or she has to the invention.