An application for patent is typically rejected by the USPTO examiner after the first examination. But the USPTO examiner must provide specific written reasons justifying the rejection. The applicant has the right to respond to the rejection to point out why the examiner is in error or to amend the claims of the application to remove the basis of the rejection.
Grounds for rejection include that the claimed invention does not comprise patent eligible subject matter, is not novel, or would be obvious to a person skilled in the relevant technology. An invention that does not comprise patent eligible subject matter, i.e., a Section 101 rejection, applies to an invention that comprises an abstract idea, law of nature or physical phenomena. (This is a big obstacle in the patenting of computer software inventions. See my prior post “Patenting Computer Software”)
The application can be rejected on the basis that the invention is not novel, i.e. a Section 102 rejection stating that all of the elements of the invention are disclosed in a previous patent or known machine or method.
By far the most frequent basis of rejection is an assertion of the USPTO examiner that the invention is an obvious variation of known technology, i.e., a Section 103 rejection based upon evaluation of what would be known to a hypothetical person skilled in the technology of the claimed invention. If the claimed invention is an obvious change (as determined by evaluation of what is deemed known by the hypothetical person skilled in the technology), then the invention is not patentable.
The most frequent basis of rejection is that the claimed invention (subject of the patent application) is obvious. Stated differently, the invention cannot be patentable if it would be an obvious variation of prior art as determined by consideration of a hypothetical person skilled in the relevant technology. The examiner searches and reports on the published references (frequently other patents or published patent applications) to establish the known technology. The examiner then figuratively constructs a hypothetical person skilled in the relevant technology to judge whether the claimed invention is merely an obvious variation of known technology. The examiner can utilize his/her perception of “common sense” to make this determination. However the examiner cannot use “hindsight”.
I have discussed the topic of obviousness rejection many times in prior posts. See for example “Overcoming Obviousness Rejections”, “Is It Patentable”, “Section 103 Obviousness Rejections” and “Section 103 Obviousness Rejections II”.
The point I want to make today is that the vast majority of patent appeals (appeals from the rejection of the patent examiner to the Patent Trial and Appeals Board or “PTAB”) pertain to rejections based upon the examiner’s assertion that the invention would be obvious to a person having ordinary skill in the technology. Professor Dennis Crouch recently reported that 35% of the appeals result in a reversal of the examiner’s rejection.
The patent applicant should not be discouraged by the initial rejection of his/her application by the USPTO examiner. This applies even if the rejection is based upon what I frequently view as an often subjective judgement of the examiner. The examiner has the burden of establishing a prima facie case of obviousness. The examiner must give reasoned explanation for the rejection and cannot rely on conclusory statements, opinion or hindsight analysis.
The applicant has the right to interview the examiner and to provide written argument contradicting the examiner’s assertion. For example, argument showing that the prior art does not make the improvement obvious. Most important, the applicant can amend the claims of the application to claim elements not shown by a combination of several prior art references. A new element or step not shown or suggested by the prior art can not be an obvious improvement.
The applicant also can, if applicable, point out that study of the prior art references cited by the examiner would, in fact, discourage a person skilled in the art to attempt to development performed by the applicant. The applicant can also argue that the prior art references do not pertain to the technology or problem solved by the applicant, i.e., the references are not analogous.
© David McEwing, 2021