An office action is written correspondence from the examiner in charge of a patent application. If the examiner’s action includes a refusal to allow all of the claims of a patent application, the reason for the refusal is stated in writing and copies of earlier patents, if applicable, are provided. Typically, an examiner’s action must be answered within three months of its mailing date.
The four (4) most common types of rejections issued by patent examiners are:
- Anticipation
- Obviousness
- Non-Enabling
- Non-Statutory
Anticipation rejections are made when a single reference (published before the filing date of your patent) teaches all the limitations of the claimed invention. However, if the single reference combines or arranges those limitations in a different way the rejection may be overcome. For software and process claims, the sequence of steps may be patentably distinct from the prior art.
Obviousness rejections are made when two or more references (e.g., patents or publications) are combined to achieve the claimed invention. For many inventors this feels unfair because so many new innovations are creative combinations of existing technologies. Some key issues to consider include:
- Do the combination of references teach every limitation in the claimed invention?
- Do the references teach away from the invention.
- Would combining the references achieve a different result or fail to achieve the benefits of the invention?
- What motivation would exist to combine these references? Does the subject matter relate to the same field or technology area?
Many inexperienced patent attorneys attempt to counter obviousness-type rejections by citing case law and claiming the patent examiner failed to establish a prima facie case of obviousness. This practice almost always fails and does not advance the application toward allowance. Patent examiners generally give substantial thought to their arguments and simply asserting the rejection is unfounded is a weak approach. It is far more productive to acknowledge the concerns of the examiner and address each one point by point….amending the claims if necessary.
Non-Enabling rejections are made when the patent claims are not supported by the specification to “enable one of ordinary skill in the art to reproduce the invention without undue experimentation.” This rejection is more common in the “unpredictable arts” such as life sciences. Just because preliminary studies show benefit for one type of cancer does not mean the patent claims are enabled for all types of cancer.
Non-Statutory rejections are common in software and for some health diagnostic claims that identify an otherwise unknown medical discovery (e.g., a person having a certain gene is predisposed to a disease). Software claims can almost always be amended to comply and the specification of software applications should include some boilerplate language on computers, digital storage and network communications. For non-statutory rejections relating to medical discoveries some novel treatment, activity or composition of matter may be required.