What are the differences between a 35 USC 102 and a 35 USC 103 rejection?

During patent prosecution it is likely that a patent examiner at the USPTO will issue an office action with a 35 USC 102 and or 35 USC 103 rejections. Samples for responding to a 35 USC 102 rejection can be found here and 35 USC 103 rejection here.

The main different between a 35 USC 102 and 35 USC 103 rejection is that prior art under 35 USC 102 must be anticipated by a single reference, where the single reference expressly discloses each claimed limitations within the reference. If a single reference does not include each and every claimed limitation, than a 35 USC 102 rejection is inappropriate (for more information based on a 35 USC 102 rejection, visit MPEP 2131). Furthermore, the single reference must directly anticipate each and every claimed limitation. Which is different than a 35 USC 103 rejection where the reference(s) must only render obvious each and every claimed limitation.

In a rejection based on 35 USC 103 the reference or a plurality of references may be used to meet each and every claimed limitation. Furthermore, in a rejection based on 35 USC 103 the references do not have to directly anticipate the claimed limitations, instead the modification of the reference must be one which would have been obvious to one of ordinary skill in the art at the time the invention was made (for more information based on a 35 USC 103 rejection, visit MPEP 2141) .

If the patent examiner at the USPTO has made a proper rejection under 35 USC 102 or 35 USC 103 that anticipates or discloses each claimed limitation, the patent attorney must identify an additional element in the patent specification that is not taught, suggested, or disclosed by the cited art references. Upon finding an additional element in the patent specification that is not taught by the cited art references, the patent attorney may add those limitations into the claims to modify the scope of the claims. The patent attorney should then in the response to the office action point out the patent examiner the novelty of the amended claim, and why the cited art references cannot be anticipate or render obvious the amended claim.

By | 2013-07-31T13:13:14+00:00 July 31st, 2013|Patent Basics|Comments Off on What are the differences between a 35 USC 102 and a 35 USC 103 rejection?