Overview of 35 USC 102:
Essentially a 35 USC 102 rejection states that a single piece of prior art discloses each and every claimed limitation, and the piece of prior art was available before applicant’s invention was filed.
The MPEP (the patent rule book) states that under 35 USC 102(a)
A person shall be entitled to a patent unless—
(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or
(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122 (b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
This portion of the rule essentially says that someone shall be granted protection for an invention if they were first to file unless someone else invented first.
35 USC 102(b) clarifies exceptions to 35 USC 102(a). The exemptions under 35 USC 102(b) are
(b) Exceptions.—
(1) Disclosures made 1 year or less before the effective filing date of the claimed invention.— A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—
(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
(2) Disclosures appearing in applications and patents.— A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—
(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;
(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.
Section 35 USC(b) clarifies that prior art will not include materials made available to the public 1 year or less before the filing date of the patent if the disclosure is made by the inventor
How to respond to and overcome the rejection?
The three main ways to overcome a 35 UCS 102 rejection include 1) invalidating the prior art, 2) arguing the prior art doesn’t teach the claimed limitation, 3) amending the claims. As a patent attorney, I prefer to try to overcome the prior art in the preceding order.
1) Invalidating the prior art.
– Most of the times the Examiner’s at the USPTO do not mess up on dates regarding what is corrected prior art. However, this is the first step that applicants should take when reviewing cited art rejections.
– The first step is to compare the publication date of the cited art with the patent filing date of your invention. If the publication date of the cited art is after your filing date, then the cited art cannot be used as a prior art reference. However, the publication date of a reference may not be when the material was “on sale” or “in public use,” which is harder to prove.
– To overcome an invalid cited art reference I like to use wording as follows:
o On page X of the office Action dated January 1, 2013, the Examiner states that Jones (the cited art reference) discloses each and every claimed limitation in independent claim 1. To expedite prosecution, and without discussing the merits of the subject matter of Jones corresponding to the claimed limitations of independent claim (which is not admitted or suggested that Jones anticipates any of the claimed limitations of independent claim 1), Applicant submits that Jones is not proper cited art under 35 USC 102. Jones was published on January 1, 2010 as evident by the filing date of Jones, while the current application was filed December 31, 2009.
As such, Jones does not qualify as prior art under 35 USC 102 because Jones was not “patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention” or “the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention” as required under 35 USC 102. In view of the above, Applicant respectfully request Jones is not proper cited art, and withdrawal of this rejection is respectfully requested.
2) Arguing the prior art doesn’t teach the claimed limitation
– In 35 USC 102 rejections, a single cited art reference must disclose each and every claimed limitation. Therefore, if a claim has a plurality of specific limitations it is unlikely that a single reference discloses each limitation of a claim.
– In the office action, the Examiner must state which FIGURES and parts of the cited art reference disclose each limitation. Some time, Examiners overlook an important limitation, which isn’t included. In this case, I like to point out what portion of the claims the Examiner didn’t address. If this is an important part of the claims, I will typically end my analysis there. But if it likely that the Examiner just missed writing down his part of the rejection or this is an obvious feature, I like to delve deeper.
– Sometimes an Examiner’s understanding of the claims and/or the cited art is different than yours. However, the examiner is able to use “the broadest reasonable interpretation” standard. This standard varies, and sometimes an Examiner’s reasonable interpretation may be 1) incorrect, or 2) not reasonable. If an Examiner’s interpretation is incorrect, I like to argue using the following as a guideline.
– On page X of the office Action dated January 1, 2013, the Examiner alleges that col. 1, lines 1-5 of Jones disclose “limitations A-C” of independent claim 1. For at least the following reasons, Applicant respectfully disagrees. Jones discloses (insert high level overview of Jones). Specifically, Col 1. lines 1-5 of Jones discloses “x,y,z,” however x,y,z is not “limitations of A-C” of independent claim 1. (insert why x,y,z is not limitations A-C). Therefore, Jones cannot anticipate “limitations A-C” of independent claim 1.
In view of the above, Jones does not disclose “limitations A-C” of independent claim 1, and independent claim 1 is allowable. Furthermore, the other independent claims are allowable at least for somewhat similar reasons as independent claim 1 and on their own merits, and the dependent claims are allowable by virtue of their dependency from an allowable base claim. This, withdrawal of this rejection is respectfully requested.
3) Amending the claims
– Typically in first office actions, the Examiner may be able to find a single reference that discloses each and every claimed limitation. The reason for this is because the claims may be unknowingly broad based on the Examiner’s “most reasonably broad standard.”
– In early office actions, the easiest way to get over cited art is to amend the claims with clarifying limitations. Clarifying amendments such as timing, what causes X to do Y, the placement of various parts of a device in relation to other parts of the device, etc. can be a very efficient way to overcome cited art. Typically, I will call the Examiner and discuss the wording on the clarifying amendment just so they know 1) why I made the amendment; 2) they agree with my reasoning, 3) they may have suggestions for how to alter the claims.
– Examiners are typically happy if you have to amend the claims even if it is just clarifying amendments because it shows that they did their job.
– To overcome a 35 USC 102 rejection via amendment I will use the following language. On page X of the office Action dated January 1, 2013, the Examiner alleges that col. 1, lines 1-5 of Jones disclose “limitations A-C” of independent claim 1. To expedite prosecution, and without conceding to the Examiner’s positions, Applicant has amended the independent claims to recite “limitation D. For at least the following reasons, Jones does not disclose “limitation D.” Jones discloses (insert high level overview of Jones). Specifically, Jones discloses “x,y,z.” However, Jones is completely silent in regards to limitation D.” Further, there is no reason why Jones would have “limitation D” because Jones (insert reasoning why Jones wouldn’t have it, if applicable.” Therefore, Jones cannot anticipate “limitation D” as currently recited in amended independent claim 1.
In view of the above, Jones does not disclose each and every limitation of amended independent claim 1, and independent claim 1 is allowable. Furthermore, the other independent claims are allowable at least for somewhat similar reasons as independent claim 1 and on their own merits, and the dependent claims are allowable by virtue of their dependency from an allowable base claim. This, withdrawal of this rejection is respectfully requested.