What are the types of rejections I could receive in view of the prior art?
Minneapolis patent attorney Suneel Arora discusses what to expect from prior art and rejections.
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You can receive a number of different rejections during the patent examination process. The types of rejections correspond to the requirements for getting a patent are utility, novelty, and non-obviousness. You might get a utility rejection, for example, if the claim is so broad as to encompass an entire abstract idea rather than the implementation of an idea. So we have to very carefully word the claim to make sure that we’re not trying to preempt others from access to the actual abstract idea but we’re limiting the scope of what we’re trying to exclude others from practicing to the actual implementation of the idea.
Another form of rejection that you can get is a novelty rejection. And the way that works in practice is that if an examiner looks at a patent claim and finds all elements of that claim in a single prior art reference whether it’s a journal article or another patent or an existing product that they’re made aware of that’s out in the market you’ll get a lack of novelty rejection. If the examiner has to combine multiple prior art references to arrive at all of the elements of the claim then what you are going to get is not a novelty rejection but an obviousness rejection.
And so the idea is that if here are more than one reference that are required to establish all elements of a claim then the question becomes not is it new but would it have been obvious to one of ordinary skill in the art to take these various teachings from these different prior arts references and combine them to arrive at what the invention is. And that’s, quite honestly, where a lot of the advocacy of a patent attorney comes into play is to really make an argument that although these different elements are out there in different references the way they’re being combined in a particular invention as claimed is not obvious.