Prior art cited in patent Office Action

When prior art is cited in an Office Action to reject your claims, the typical reaction of applicants is a generalization of how their invention is different. That may be true. A persuasive Office Action response, however, will require a deeper analysis of the prior art. So you must be able to answer the following questions in order to respond effectively to prior art rejections:

  1. How is the examiner applying the prior art?
  2. Do the cited prior art references actually teach what the examiner alleges?
  3. How are your (amended) claims, and not your disclosure, distinguishable?

Claim rejections: How patent examiners apply prior art

A proper understanding of how the examiner is applying each particular prior art reference is crucial. You need to know the difference between anticipation under Section 102 and obviousness under Section 103. If the Office Action states that a prior art reference “anticipates” certain claims, that means the examiner believes that a single prior art references shows all the features recited in the rejected claim(s).

If a single prior art references does not show all limitations in a particular claim, the examiner may combine multiple prior art references to reject your claim as being obvious. In an obviousness rejection, each reference is being cited for showing only certain features, and not the entirety of your claim.

Suppose a claim reciting ABC is rejected for being obvious. The examiner might use a prior art combination where Reference 1 showing A and B, is combined with Reference 2 showing C. It would be pointless, therefore, to argue that Reference 2 fails to show A and B. You need to show how Reference 2 fails to show C, or how Reference 1 fails to show A or B. You can also argue why it would not be obvious to combine Reference 1 with Reference 2.

Do the prior art references actually show what is stated in the Office Action?

Examiners sometimes take an overly broad interpretation of a claim term. Based on that broad interpretation, they then find the claim term in a prior art reference. In response, you may need to specify the definition of the claim term with clarifying remarks or tighter claim language, or a combination of both. You can then proceed to show why that claim term is not found in the prior art reference. For example, claim term means X while the prior art shows Y, and Y cannot be X because . . . .

How are your claims distinguishable from the prior art cited in the Office Action?

A common mistake is to argue distinguishing features of your invention that are absent from your claims. You may have a valid point about those features, but the argument is meritless if your claims fail to include language covering those features.

Do claims in the prior art reference matter?

No, not for patentability. A common reaction to prior art cited in an Office Action is: How did these guys get a patent? Here’s how I normally respond to that question:

  1. Initially, we don’t know if these guys got a patent. What often gets cited as prior art is not a patent, but a published patent application.
  2. Even if they were awarded a patent, their claims do not matter for purposes of determining whether our invention is patentable. The issue is patentability, not infringement.
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Vic Lin

Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
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Vic Lin

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