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How do I read an Office Action? 

Acknowledgement of Earlier Filings
or Response to Amendment

The Examiner will indicate which of your earlier filings he is reacting to (if any), and whether or not any amendments you made were accepted (entered). Make sure that you're on the same page here, and that he has received anything you've sent. The Examiner may also respond to any arguments you made in an earlier filing here, or sometimes in a "Response to Arguments" section at the end of the Action. 

Objections

The Examiner may object to the specification, drawings or claims for various reasons. Objections will usually be set forth before any rejections of the claims, in the sections below. 

Typically, claim objections deal only with very obvious errors - misspellings, duplicated or missing words, or incorrect punctuation. More involved problems will be dealt with in rejections under section 112 (see below). 

The Examiner will usually suggest corrections. You will be expected to overcome the objection by making corrections amending the application in your response to the office action.  

Claim Rejections

For the purpose of this discussion, let's assume that the application has the following claims:

1. A widget comprising:

a gronkheiser;

a portoflan armature having a distal end and a proxmial end, coupled to the gronkheiser; and

a frammis mounted upon the distal end of the portoflan armature.

2. The widget of claim 1, in which the fubar relay is cross polarized. 

3. The widget of claim 2, in which the end of the portoflan armature is arcuate. 

4. The widget of claim 1 further comprising the step of depolarizing the portoflan armature. 

5. The widget of claim 1, in which the frammis is mounted upon the proximal end. 

The claims might be rejected over one or more of the following sections of the Patent Law (volume 35 of the United States Code). To see the actual words of the law, click on the section number below:

These rejections deal with matters of wording and formality, and are usually straightforward to deal with. You may need to change some wording, or reorganize the way a claim is written.

Here are a few terms you will see in section 112 rejections: 

• "no antecedent basis" - a word is used for the first time in this claim, and it is not clear what this element is. "Fubar relay", in claim 2, has no antecedent basis, because there is no "fubar relay" in claim 1. This could be corrected either by adding the fubar relay to claim 1, or by amending claim 2 to read "The widget of claim 1 further comprising a cross-polarized fubar relay". 
• "Vague and indefinite" - the Examiner thinks the claim, or some combination of the claims, is unclear or contradictory. In claim 3, for instance, which "end" are we talking about? Claim 5 contradicts claim 1 on which it depends - so which end is the frammis on - distal or proximal?  
• "lack of support" - suppose the patent specification never used the word "gronkheiser", but always called this element a "furbelow". There would not be any support for the word "gronkheiser" in this claim. You can either change some of the "furbelows" in the specification to "gronkheisers", or vice versa. 
• "improper claim form" - Claim 4 says it is based on the widget (apparatus) of claim 1, but the claim is to a step in a method, not an apparatus. It is improper to combine method and apparatus in this way, although it would be OK to say, "in which the portoflan armature is depolarized."

This rejection does not come up very often, except in computer or biotech applications. Section 101 reads:

"Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title."

A section 101 Subject Matter rejection means that the Examiner believes that the invention is either not one of the very broad classes of invention on which one can get a patent, or fits within one of the exceptions to patentability. That is, the Examiner believes the invention is not one of the following types of inventions:

• Machines
• Articles of manufacture
• Methods (processes)
• Compositions of matter (chemicals, cell lines, DNA sequences)
• Improvements to any of the above.
•  the appearance of useful objects. (design patent) or
• an asexually reproduced plant (plant patent)

Or, he believes the invention is one of the following things: 

• Purely mental processes
• Mathematical algorithms or formulas (that is, just a formula without a real-world effect - a formula or algorithm may be claimed as part of a method, so long as there is an effect on the real world)
• Arrangements of printed matter (Printed matter may be part of a patentable invention, but if the "invention" is just words, copyright protection is more appropriate)
• Naturally occurring things (unaltered - these are not "inventions")
• Scientific principles (a device or method which operates based on a new scientific principle can be patented, but the underlying principle cannot)
• Inventions solely useful in making atomic weapons
• Human beings

You can overcome this type of rejection by amending the claims so that they claim something which does fit within the list of acceptable inventions (or does not fit within the list of prohibited inventions). 

For example, suppose you originally claimed a method of doing something without any technical component or real-world application: 

10. A method of obtaining an average, comprising the steps of adding 'n' numbers to get a total, and then dividing the total by 'n'. 

You would be likely to receive a section 101 rejection on the grounds that the claimed invention is either a purely mental process, or a mathematical algorithm. You could probably overcome the rejection by amending the claim to add some real-world effect:

10. (currently amended) A method of obtaining an average weight for a plurality 'n' of frozen turkeys comprising the steps of weighing each turkey to determine a weight of the turkey, adding the 'n' weights [numbers] to get a total weight, and then dividing the total by 'n' giving an average weight, and adjusting a recommended cooking time for the plurality turkeys based on the average weight. 

Or, you can sometimes overcome such a rejection by reciting sufficient structure to provide a technical basis for the claim: 

10. (currently amended) A computer-implemented method of obtaining an average, comprising the steps of accepting 'n' numbers input at a computer terminal, adding the 'n' numbers to get a total, [and then] dividing the total by 'n' giving an average, and displaying the average on a computer output device. 

Section 101 - No-Utility

A section 101 "lack of utility" rejection arises in the following circumstances:

• DNA sequences, chemical substances or drugs with no known use. 
• Computer program-based invention with no "real world" application.

You can overcome this kind of rejection by amending the claim(s) to add a use for the substance or a real world effect of the computer program. Of course, you can only do this if the material you want to add is in the specification as filed. If it is not, you may need to file a continuation-in-part application to disclose test data or add new matter showing a real world use for the invention. 

• Perpetual Motion
• Anti-Gravity

To overcome this, you might have to perform a demonstration for the Examiner to prove your invention works. These two classes of inventions are the only cases in which Examiners routinely request working models.   

Section 102 - Novelty: 

The Examiner feels that the invention in the claim is identical to that in a cited reference. Section 102 rejections are most often based on section 102(a) (prior invention by others), 102(b) (patented, published or in public use or on sale more than a year before application) or 102(e) (a patent which issued or an application which was published after the filing date of this application, but was based on an application with an earlier filing date). 

To overcome the rejection, you'll need to point out a significant difference between your claim and the reference. Note that this difference will need to be in the claim, or you'll need to amend the claim to put the difference in - pointing out a difference between the preferred embodiment of your invention and the reference would not be sufficient. Before you argue a difference, though, check the date it became a reference - sometimes a reference cited isn't really a section 102 reference at all, because the Examiner made a mistake on the date. 

For example, suppose the Examiner cited the 1934 Schmidt patent against claim 1, and Schmidt shows a widget, but his widget does not have a frammis. You can overcome this rejection by pointing out the lack of a frammis in the reference. 

Suppose Schmidt has all of the elements in claim 1, but no fubar relay, called out in claim 2? Then you could combine claim 2 into claim 1, and the claim would be allowable (if narrower). 

What if the difference were that Schmidt had all of the elements in claim 1, but your application describes your widget as having an arcuate gribble bit? That element doesn't appear in the claims, but it is described in the specification and shown in the drawings. You cannot argue this difference, unless you amend claim 1 to include the arcuate gribble bit. If you amend claim 1 to add the bit, it would now be allowable. 

This means that the Examiner feels that while the invention in the claim is not identically shown in any single reference, it would have been obvious to an ordinary person skilled in the art in light of the combination of references cited. This type of rejection is the most difficult to overcome, although not impossible by any means - you should focus on the question of "what would the cited references teach, if you combined them?"

Most inventors have the urge to deal with the references separately - do not fall into this trap. The Examiner has admitted that neither of the references shows your invention. That is why he issued an obviousness rejection in the first place, rather than a novelty rejection.  To overcome these rejections it is important to realize that you'll need to not only show that there are differences between the claimed invention and each of the references, but also that the combination of the references does not teach or suggest the invention in the claim.  

First, you should check the dates, as noted above - is every reference really a reference, or is one or more of them too late to be cited against your application?

Second, be sure that the Examiner has characterized the references properly - does the combination really show every element of your invention? Is some element missing from all of the references, so that the combination could not supply what each of them lacks individually?

It is often helpful to perform the mental exercise of actually combining the references - what would the combination look like? Would it be possible to combine the references at all? Would it work, or would one reference work against the other so that the combination would be inoperable? Does any of the references "teach away" from the combination? 

Are both references from the same field of technology as your invention? The legal standard is "what would a Person Having Ordinary Skill In The Art ("Mr. PHOSITA") understand from the reference?". But this requires the decision, "in what art does Mr. PHOSITA have his skill?" The term "art" means "the same field as the invention".  If one of the references is so far afield that the fictional PHOSITA would not know about it, it isn't proper to make the combination. For example, if your invention is a toothbrush with a removable head, it would not be proper to combine a brush from a carwash with the breakaway base of a highway street lamp. Perhaps you don't believe that Mr. PHOSITA would have sufficient skill to combine the references - a declaration from someone who really does have "ordinary skill in the art" might convince the Examiner. 

If all else fails, can you narrow your claims to avoid the combination? 

The rule is "one invention, one patent". If you have filed two applications claiming the same invention, the later-filed application will be rejected on the grounds that you are trying for two patents on the same invention. If the earlier filing has not yet issued, the Examiner will make the rejection "provisional" in both cases, which means that once one issues, the other will be rejected for double patenting. 

You can overcome this objection by filing a "Terminal Disclaimer" which limits the term of this application, if issued as a patent, to coincide with the term of the issued patent.

Allowable Subject Matter

The Examiner may indicate that some claims were allowed - Congratulations! Once all other problems with the application (if any) are corrected, the Examiner will issue a "Notice of Allowance" and these claims will issue in a patent. 

The Examiner may also indicate that some claims would be allowable, if rewritten to include the limitations of the claims on which they depend. This means that if you amend these claims to combine them with the claims on which they depend, the Examiner will allow them. The resulting claims will be narrower than the broadest claim in the original application, of course. 

You can also do the reverse - rewrite the claims on which the allowable claim depends - and the Examiner will then allow the base claim and all which depend on it. In this example, suppose that the Examiner indicated that claim 3 would be allowable if rewritten in independent form. You would have two choices - you could do just that, turn claim 3 into an independent claim (added material is underlined, deleted material is struck out, comments in italics):

3. The A widget of claim 2,  comprising (this converts the claim to independent)

a gronkheiser;

a cross-polarized fubar relay; (from claim 2)

a portoflan armature having a distal end and a proxmial end, in which the proximal end of the portoflan armature is arcuate, coupled to the gronkheiser; and

a frammis mounted upon the distal end of the portoflan armature.

If you do this, the Examiner will allow this claim. Or, you could move the subject matter of claims 2 and 3 into claim 1:

1. A widget comprising:

a gronkheiser;

a cross-polarized fubar relay; (from claim 2)

a portoflan armature having a distal end and an arcuate proxmial end, coupled to the gronkheiser;  and ("arcuate" from claim 3)

a frammis mounted upon the distal end of the portoflan armature.

Now, the Examiner will allow all of the claims (once the other problems are fixed), since claim 1 is now equivalent to claim 3, which he said would be allowable. 

<- Back to Step 2 - Ahead to Step 4->

Don't forget our "Patent FAQ" page - it has lots of information about patents and the patent process. 

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