The Most Important Part of your Patent Application: Claim Construction and Examination in the USPTO

Intellectual property rights are property rights. In patent law, the claims provide the boundaries of the patent owner’s property and protect must be sought in every jurisdiction where one anticipates doing business.  This also means that an application will go through the examination process of each jurisdiction.  In the following, we describe how to properly define the property rights of an invention in the USPTO.

In the USPTO, there are three governing rules for defining the inventive property (i.e. the claims)—that the inventive property is clearly defined, that it is novel, and that it is non-obvious—however distinct these rules are, they can be inter-related.

First, the application must include “one or more claims [that] particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention”, (35 U.S.C. § 112(b))—meaning that the property boundaries are well defined.  There are a number of ways this requirement comes to light during examination, from obvious typos and grammatical mistakes to inconsistencies in naming.  The rules for distinctly claiming the invention are also intricately tied to the requirements for the description of the invention, (35 U.S.C. § 112(a)), which must include the manner and process of making and using it so as to enable any person to make and use the same and the best mode of carrying out the invention.

While an Examiner may issue rejections of the description and claims under 112(a) and (b), respectively, the description tends to be examined only with respect to the claimed features. A very difficult rejection to overcome is a rejection for enablement, which can be the result of not having sufficient description for one or several features of the claimed invention and is most easily resolved by canceling non-enabled features from the claims, which can significantly decrease the scope of the claims.  Many common pitfalls related to 35 USC 112 requirements can be avoided by having a patent professional review the application before filing.

Of the second requirement, “a person shall be entitled to a patent unless—(a) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention;”, (35 U.S.C. § 102(a))—meaning that the invention as defined by the claims is novel.

Of the third, “A patent for a claimed invention may not be obtained […]  if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains”, (35 U.S.C. § 103)—meaning that the invention as defined by the claims is non-obvious.  The second and third rules effectively determine that the invention being examined is not already part of another patent owner’s property.

During examination of the application in the USPTO, the claim “as a whole” must be considered by an Examiner, and in evaluating this, each and every feature will be compared to the best prior art references. If all features of a claim can be found in one prior art reference, a novelty rejection will be made.  If more than one reference is used to map each feature of the claim, then a non-obvious rejection may be made by the Examiner.

It is very common to receive a rejection for novelty or non-obviousness based on prior art reference that seem unrelated to the invention as claimed, and while it is very easy to feel frustrated and misunderstood by the examiner, it is the Examiner’s job to clarify the boundaries of the inventive property during examination.  Our patent professionals can help during examination to determine the best response to such a rejection.  Should the prior art rejection be argued based on the technological differences or should the claims be amended to define the intellectual property rights more clearly?

Our experienced patent professionals can help.

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We are pleased to announce that AAA Law  has received top places in four areas in the 2022 Legal 500 rankings:

  • Intellectual property (Tier 1)
  • TMT (Tier 2)
  • Real estate and construction (Tier 3)
  • Dispute resolution (Tier 5)


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