Intellectual Property Insights from Fishman Stewart PLLC
Newsletter – Volume 23, Issue 9
Share on Social
Reeling in Patent Protection: Section 102 and 103 Rejections in the USPTO Waters
In the Midwest, open water fishing season is upon us. As with traveling on the Great Lakes, navigating the choppy waters of the United States Patent and Trademark Office (USPTO) can be a daunting endeavor for any applicant angling to protect their innovations. Like a master angler, one must use the right bait to bring in a successful patent. Patent claims are the essential bait in a patent practitioner’s tackle box. Patent claims, found at the end of a patent and often compared to a property deed, define the scope of legal protection for the invention. Like a fisherman selecting the perfect lure, a patent practitioner hunts for just the right words to craft their patent claims to cover the unique features of the invention.
You or your inventors may have come up with a new lure that darts around in the water. The patent practitioner will work to find just the right words and turn of phrases to succinctly describe the invention in the patent claims.
When a USPTO patent examiner gets around to reviewing your claims, it’s their job to determine whether or not the claims should be rejected. The most common rejections are cast out as anticipation and obviousness rejections under Sections 102 and 103, respectively, of the United States Code (U.S.C.) Title 35.
Hook, Line, and Sinker: Section 102 Anticipation Rejections
In the deep waters of patent law, an “anticipation” rejection under Section 102 is the Muskellunge of patent rejections –swallowing your invention hook, line, and sinker.
Anticipation rejections occur when the USPTO patent examiner roots around in their tackle box and finds a single piece of “prior art” that the examiner feels “reads” on your invention as described in the claims. Generally, “prior art” includes documents that are relevant to the claimed subject matter of the patent application, and that were known prior to the effective filing date of the patent application. These can include, for example, patents, patent applications, other publications, and even documents associated with public use or sale of the invention. In other words, examiners are looking for a single piece of prior art that shows your claimed invention is not novel. If found, the prior art is presented to the inventor along with an explanation as to why the examiner feels you are trying to reel in a fish that has already been caught.
In response, the patent practitioner may argue that the prior art reference does not actually disclose the invention as described in the claim(s). Alternatively, it may be possible to change the claim language to better differentiate the invention from the prior art. Indeed, sometimes it is as simple as a minor change in language. Remember, the invention is defined by the claims, not by the beautiful pictures and whatnot in the patent.
Let us say it is 1896 and you came up with a special fishing hook. You file a patent application with the following claim language: An apparatus having a shank, a line coupled to a top portion of the shank, and two hooks protruding from a bottom portion of the shank.
In response, an examiner rejects your claim under section 102 alleging that this anchor anticipates your claim. Sure, it is an anchor, but it is also pretty hard to argue that it does not read on your claim language. As such, maybe now would be a good time to amend the claim language to change “two hooks” to “two fishing hooks.”
The School of Fish: Section 103 Obviousness Rejections
Another hurdle you may face during your day fishing for patent protection is the cunning Section 103 rejection, also known as an “obviousness” rejection. This type of rejection, which often relies on multiple pieces of prior art, is more akin to a school of bait fish nibbling away at your invention until there is nothing left.
The obviousness rejection is often a more challenging fish to fry, as it relies on the examiner’s subjective determination of whether the invention would have been obvious to a person of ordinary skill in the art (POSITA) at the time it was conceived. Often, an examiner makes a stew of multiple pieces of prior art, and then presents an argument as to why they feel your invention is obvious in light of the cited art.
The Section 103 rejection is a wide net that is easy to get snagged in. To get out of this snag, the patent practitioner may choose to argue that the fish stew is no good. That is, arguments may be presented to convince the examiner that the combination of prior art references would not have led a POSITA to the claimed invention. Alternatively, it may be possible to change the claim language to better highlight the non-obvious features of the invention.
Successfully arguing against an obviousness rejection can feel like spending the day reeling in a big marlin – time consuming and tiring, but gratifying. Unsuccessful? Well that feels more like spending the day reeling in a big marlin, only for it to pull you and your gear into the sea when it gets to the boat.
Navigating the USPTO’s waters and avoiding the Section 102 and 103 predators requires a deep understanding of patent law and a keen sense of strategy so you do not get stuck in the weeds. Much like the fisherman who knows when to cast their line and when to change their bait, a patent practitioner must be prepared to adapt and respond to the challenges that may arise in their pursuit of patent protection.
Patent prosecution and angling: sometimes the skies are clear and it’s smooth sailing, while other times you end up cold, wet, hungry, and feeling crappie. Pardon the pun.
Mark Lambrecht is Of Counsel to Fishman Stewart. Mark is a registered patent attorney and practices various aspects of intellectual property matters including domestic and foreign patent prosecution, opinions, and design-around. He has an extensive background in the electrical, electro-mechanical, electro-magnetic, and software/hardware arts.
Related Content from Fishman Stewart
First, a big “thank you” to all our readers who have given feedback on our newsletter. We appreciate your interest and insights. It is always a treat to hear from you! Second, we wanted to provide you with updates on some of our most popular articles
How will you be celebrating World IP Day on April 26th? Finny will be swimming around the world testing the cleanliness of our waters and visiting his friends under the sea because this year’s topic is “Sustainable Development Goals” (or “SDGs” for short).
Climate change has increasingly dominated daily news cycles, signaling a growing urgency for action. The escalation of temperatures during the hottest months serves as a stark reminder of the immediate need for solutions.
President Donald Trump recently began promoting a brand-new pair of limited edition sneakers for sale bearing a T logo, American flag design, gold upper, and red sole bottom. Surprisingly, the Never Surrender High-Tops bear a striking resemblance to these high-end fashion sneakers manufactured and sold by famous footwear designer Christian Louboutin.
The issue of deepfakes has been making headlines as the US enters another presidential election cycle, due largely to concerns over the potentially deleterious effects of misinformation on voters.
“Palworld”— a computer game created and published by Japanese developer Pocket Pair. Released as an early access game in January 2024, it sold over seven million copies on the computer platform Steam in the first five days and had nearly 20 million players in the first two weeks.
This year’s Super Bowl featured a thrilling overtime victory for the Kansas City Chiefs over the San Francisco 49ers. With estimates as high as 123 million viewers, America's premier sporting event also serves as a grand stage for creativity and intellectual property protections that enhance the game’s success.
Valentine’s Day is just around the corner and jewelry sales are usually around $6 billion USD in the United States alone. In 2021, the US Customs and Border Protection agency seized over $1 billion USD worth of counterfeit pieces of jewelry.
Detroit Lions In Copyright Dispute Over Barry Sanders Statue
Fish Tank: Newsletter Volume 24, Issue 3
This season marked many ‘firsts’ for the Lions including unveiling the first statue at Ford Field immortalizing a former Lion: Barry Sanders. However, some may not consider the Sanders statue a clear ‘win’ for the Detroit Lions franchise.
A few years ago, the Copyright Office received a large number of requests from Twilight fans who wanted to get a peek at the registered and unpublished manuscript of Stephanie Meyer’s Forever Dawn.
IDENTIFYING, SECURING AND ADVANCING CREATIVITY®