In order to obtain a patent on an invention, one of the legal requirements under U.S. law is that an invention be new or novel. See 35 U.S.C. § 102. An application for a U.S. patent for an invention filed with the United States Patent Office (“PTO”) may be rejected under 35 U.S.C. § 102 (“102 rejection”) if a single prior art reference teaches each and every element of a patent application’s claim. Generally speaking, the term prior art means information available to the public that predates the filing date of a patent application. Prior art may include patents and other printed publications available to the public anywhere in the world before the filing date of a patent application.
If an Examining Attorney at the PTO issues an Office Action that includes a 102 rejection, then, generally speaking, you have two options as to how to respond. First, you can use legal arguments to explain or argue to the Examining Attorney why each and every claim element is not anticipated or taught by the prior art reference. To do this, an applicant’s patent attorney will use legal arguments to respond to the 102 rejection. Such arguments include that the prior art does not accomplish the intended purpose of the applicant’s invention, that the prior cannot be considered prior art, and that the claim elements of the prior art do not teach the patent application’s claims. This requires a detailed look at the prior art and comparing the prior art to your claimed invention. Second, you may include additional elements, supported by the specification, to a claim to narrow the claim’s scope to differentiate the claim from the prior art reference.
The patent attorneys at The Plus IP Firm help businesses overcome Office Actions issued by the PTO. The patent attorneys at The Plus IP Firm have helped numerous clients obtain numerous patents in highly competitive areas. To schedule a free consultation, click HERE.
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