Avoiding Section 102 and 103 Rejections:
Section 102 and Section 103 of the U.S. Patent Act, which govern the novelty and obviousness of proposed inventions, are the two most frequent grounds on which new patent applications are rejected by USPTO examiners.
Preparing a patent application to comply with both Section 102 and 103 is both a creative, organic exercise and a matter of careful, data-driven preparation. Here are four approaches that will help increase your patent application’s chances of success.
Search for prior art by classifications in addition to descriptive searches.
The most basic searches for prior art typically involve searching for elements of the name or description of an earlier invention. While this type of search is useful, it also presents several potential pitfalls. Valid prior art may not use expected words or phrases in its descriptions. For example, prior art for a claimed invention of a new screwdriver might not use the word “screwdriver,” but could instead include the description of “a handheld device for loosening and tightening threaded fasteners.”
Another use for descriptive searches is to identify the classifications and sub-classifications that are most likely to include prior art for the proposed invention. Patent researchers can then focus on searching those specific classes and subclasses.
Depending upon the nature of the invention, freely available patent search tools may not offer the required depth and flexibility to fully support these more complex and in-depth types of searches.
Include international patents in a prior art search.
There are well over 100 patent authorities around the world, and the rapid adoption of the Cooperative Patent Classification system (CPC) is making it much easier for these agencies to coordinate their administrative efforts. Prior art from, say, Taiwan is more likely to serve as a basis for invalidating your patent today than it would have in 1995.
Make sure you are conducting a prior art search that incorporates the patent data of as many international patent authorities as possible.
Be aware of comparable patents and distinguish your application.
If an exhaustive prior art search has failed to yield any results, a prudent next step is to try to identify and become familiar with the claims of any patents that another researcher might mistakenly cite as “prior art.”
While it may be that no single example of prior art fully encompasses a new invention’s proposed claims, one or more prior inventions may have claims that resemble them enough to give a patent examiner pause. At best, that can prolong the application process and may result in a non-final rejection.
Try to anticipate the examination process by closely evaluating the proposed invention’s claims anew against any patents that could be viewed as prior art, even if your earlier research process already has ruled them out. Prepare the application to distinguish itself from the earlier works in such a way that a less skilled or experienced analysis can discern the uniqueness of the new invention’s claims against those of the older, comparable inventions.
Be well versed in prior art.
How to avoid an “obvious” invention is often anything but obvious, and defending an invention against the charge that it is obvious can be one of the most difficult aspects of patent drafting and prosecution.
Of Sections 102 and 103, Section 103 defines a would-be invention’s obviousness by subjecting it to the scrutiny of a hypothetical “person having ordinary skill in the art to which [the invention’s] subject matter pertains.” Unfortunately, this merely shifts the subjectivity from the question of what is obvious to the question of what comprises “ordinary skill.” Many patent disputes that wind up in civil litigation have turned on these issues.
That said, “obviousness” is another area where being deeply familiar with relevant prior works in all the related art units will better position you for successful patent prosecution.
Even if no single example of prior art covers a proposed invention’s claims, the invention could still be subject to charges of obviousness if an examiner can frame its claims as merely a combination of claims from multiple prior art works.
As when attempting to distinguish an invention’s claims from alleged prior art, defending against obviousness requires some imagination. Instead of anticipating individual works of prior art to which the invention might be compared, the challenge here is to imagine how an examiner might perceive it as an “obvious” fusion of two or more patented or unpatentable claims.
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