Chess, when played beyond a basic skill level, is not a game about pieces; it’s about reading your opponent.
This saying applies to patent prosecution, where each written document has an inherent risk of introducing rejections. Further, extended arguments are generally more expensive since they require additional time to draft and edit. For this reason, the better strategy is to present the most efficient patentability arguments possible to overcome an examiner’s rejections.
The information on the prosecution history associated with US patent documents is very insightful. Studying the negotiations between an examiner and an applicant and how they affect the scope of a patent claim can be a powerful way to overcome prior art.
Unfortunately, the information in the file wrapper histories is not easily accessible. In such instances, you can add GreyB’s Examiner Analytics tool, which provides an “Office Action Analysis Report,” to your toolkit. The tool is handy when you face a challenging office action rejection.
An Examiner conducts his own “prior art” search and usually gives the following three kinds of rejections:
- 101 patent rejection: the invention is not useful;
- 102 patent rejection: the invention is completely described in a single prior art document; and
- 103 patent rejection: the invention is an obvious combination of two or more prior art documents.
Suppose your client’s patent application is rejected as allegedly obvious under 35 USC §102. Now, the best ways to overcome a 35 UCS 102 rejection include:
- Arguing that the prior art doesn’t teach the claimed limitation,
- Amending the claims.
Below is an example that illustrates how an “Office Action Analysis Report” generated by GreyB’s Examiner Analytics tool would present complex information in a simplified form, helping you prepare an office action response and overcome a rejection.
The availability of information to gain insights into what is happening would help determine the best way to proceed. Certainly, clients would appreciate your ability to help them make informed IP decisions. Plus, it also helps you convince a client that you have the best strategies to respond to rejections that save him time and money, too.
Authored By: Geetika Dube, Project Manager.