Dealing With Rejection
<!– /* Style Definitions */ p.MsoNormal, li.MsoNormal, div.MsoNormal {mso-style-parent:”"; margin:0in; margin-bottom:.0001pt; mso-pagination:widow-orphan; font-size:12.0pt; font-family:”Times New Roman”; mso-fareast-font-family:”Times New Roman”;} @page Section1 {size:8.5in 11.0in; margin:1.0in 1.25in 1.0in 1.25in; mso-header-margin:.5in; mso-footer-margin:.5in; mso-paper-source:0;} div.Section1 {page:Section1;} –>
The Patent Examiner will consider your application and decide whether to allow the claims or reject the claims. There are several reasons why an Examiner may reject, or object to, one or all of the claims. The Examiner may reject the claims for technical reasons, such as typos, improper language, such as improper use of trademarks, and improper context. Such rejections grounds are usually easily overcome, by correcting typos, deleting improperly used trademarks, or by supplying proper context, or correcting “antecedent basis” problems.
More troublesome for inventors are the rejections based on anticipation (someone invented your claimed device before you did, i.e., the ten speed bicycle in the example given above) or obviousness (in that your device was obvious to one skilled in the art, based on the existing prior art, or the patents and publications known to the public). Unfortunately, each case is different, so there are no blanket answers. All that can be done is to examine the specification and drawings and attempt to draw distinctions between the invention, and the existing prior art.
I will note in passing that “obviousness” rejections until recently, required that the prior art show some “motivation”, “rationale” or “teaching” for combining the prior art to form a basis for an obviousness rejection. In a case call “KSR v. Teleflex” the Supreme Court broadened the grounds for finding obviousness, which makes the inventor’s case more difficult when the Examiner rejects a claim based on obviousness. As each case is different, I cannot provide a listing of those facts which render a device obvious or unobvious. It is, however, important that you know that this hurdle is waiting, and it must be cleared before a patent may be issued.
Rejections, for whatever the reasons, generally require that an amended set of claims be submitted. There are specific rules for drafting an amendment.
Once, or if, the claims are considered to be allowable, the patent application is then passed forward to issue.