Curing or Correcting a Refusal

 

Dealing with Refusals – How to Cure or Correct Them

Getting a refusal during the patent prosecution process can be frustrating. But don’t worry – with some knowledge and strategy, many refusals can be overcome. This article will walk through some common types of refusals, reasons they happen, and tips for responding to cure or correct them.

What is a Patent Refusal?

A patent refusal (sometimes called an office action) occurs when a patent examiner rejects one or more claims in a patent application. This means the examiner has determined the claims do not meet the requirements for patentability – things like novelty, non-obviousness, and adequate disclosure.

Refusals are a normal part of the back-and-forth negotiation process with the patent office. They give applicants a chance to amend claims and arguments to get around issues identified by the examiner. But it can take some work to get to allowance!

Common Types of Refusals

There are a few main categories of refusals:

• 35 U.S.C. 101 – Patent Eligible Subject Matter
• 35 U.S.C. 102 – Novelty and Loss of Right to Patent
• 35 U.S.C. 103 – Obviousness
• 35 U.S.C. 112 – Disclosure and Claim Issues

35 U.S.C. 101 – Patent Eligible Subject Matter

This section of the patent law deals with patentable subject matter. Examiners will issue 101 refusals if they believe the claims are directed to non-statutory subject matter – things like abstract ideas, laws of nature, or natural phenomena.

101 rejections have become more common in recent years, especially in the software and biotech industries. Cases like Alice Corp. v. CLS Bank have tightened the standards on patent eligibility.

But 101 is not an automatic death sentence! With the right arguments, many claims can overcome this refusal. Pointing out technical improvements and having a robust specification are key.

35 U.S.C. 102 – Novelty and Loss of Right to Patent

The 102 rejection says that a claim lacks novelty. This means the examiner believes the claimed invention is fully anticipated by a single prior art reference.

There are two main ways to overcome a 102 rejection:

• Argue that the reference doesn’t teach each and every element of the claim. Even one missing limitation is enough to disqualify it as prior art.
• Use the specification to disqualify the reference. For example, if it was published after the filing date or invented by the same inventor(s), it may not be citable.

35 U.S.C. 103 – Obviousness

This is one of the most common rejection types. It means the examiner thinks the claim would have been obvious to a person having ordinary skill in the art (often abbreviated PHOSITA).

103 rejections can feel frustrating because they rely on hindsight bias. But there are ways to rebut them:

• Argue there is no teaching, suggestion, or motivation to combine the references.
• Point out unexpected results from the invention.
• Amend the claims to include limitations that make the invention less obvious.
• Submit an affidavit showing commercial success of the invention.

35 U.S.C. 112 – Disclosure and Claim Issues

This section deals with the adequacy of the description and clarity of the claims. Common 112 rejections include:

• Lack of written description – The specification doesn’t demonstrate possession of the full scope of the claims.
• Lack of enablement – The specification doesn’t teach a PHOSITA how to make and use the invention without undue experimentation.
• Indefiniteness – The claims are ambiguous, vague, or unclear.
• Improper dependent form – A dependent claim does not further limit the parent claim.

Like other refusals, 112 rejections can often be overcome by amending the claims and pointing to support in the specification. Providing more experimental data can also help for lack of enablement issues.

Why Do Refusals Happen?

There are a few reasons why an examiner may issue a refusal:

• Overly broad claims – Trying to claim more than is justified by the specification and prior art.
• Unclear claims – Using ambiguous language that causes confusion on claim scope.
• Missing elements – Forgetting to include key limitations when drafting claims.
• New examiner – Different examiners have different styles and familiarity with the technology.
• Change in law – Evolving case law and USPTO guidance impacts patentability standards.

But don’t take it personally – refusals are just part of the process! The examiner isn’t out to get you, they just have a job to do.

Responding to Refusals

The most common ways to overcome a refusal are:

• Amending claims – Tweaking claim language to avoid issues.
• Arguing rejections – Pointing out flaws in the examiner’s reasoning.
• Submitting amendments – Filing corrected drawings, specification, etc.
• Getting an interview – Discussing face-to-face to understand concerns.

Some key tips for responding:

• Be respectful and professional. Snarky arguments won’t help!
• Directly address each point raised. Don’t ignore hard questions.
• Keep prosecuting! It often takes 2+ rounds before allowance.
• Consider bringing in a patent attorney if you’re struggling. Their expertise can help navigate complex rejections.

Amending Claims

This is the most effective strategy in many cases. Some ways to amend:

• Add limitations to avoid prior art.
• Clarify ambiguous language flagged under 112.
• Narrow claims to steer clear of 101.
• Fix dependency issues.
• Delete overly problematic claims.

But be careful not to narrow too much! Amendments should be strategic to avoid limiting patent rights down the road.

Argue Rejections

Pointing out flaws in the examiner’s position can overcome refusals:

• Distinguish claims from cited prior art.
• Explain why references cannot be logically combined.
• Clarify why claims are supported by the specification.
• Provide evidence of unexpected results.

Just be sure to back up arguments with facts and evidence. Dismissive or accusatory language will not go over well.

Get an Interview

Sometimes it helps to talk directly with the examiner about issues. Interviews allow you to:

• Seek clarification on objections.
• Present arguments and amendments.
• Gauge the examiner’s position.
• Discuss possible claim language.
• Resolve issues faster.

Come prepared with an agenda to make the best use of time. Take detailed notes and follow up with a written summary.

Don’t Give Up!

While refusals can be discouraging, most applications eventually get allowed if you stick with it. Be ready to go through multiple rounds of rejection and response before getting to allowance.

It’s all about give and take – adjusting the language and strategy until you find something the examiner can agree to. While individual results will vary, patience and perseverance is key.

Conclusion

Dealing with patent refusals is often par for the course. While frustrating, they actually present an opportunity to improve the application through back-and-forth with the examiner. Don’t panic, and take advantage of the process to get strong, enforceable patent claims in the end.

With the right amendments and arguments – plus a healthy dose of determination – many refusals can be successfully overcome. Work through each objection methodically, get help if you need it, and keep moving forward on the path to allowance!