How to Review a Draft Office Action Response

Roughly 90% of utility patent applications will get rejected at least once. When it comes to utility patent applications, rejections come with the territory. The question is not if you get rejected, but when you get rejected. Expect at least one Office Action in your nonprovisional patent application. In fact, two or three rejections are not uncommon. Since rejections are inevitable, it pays to know how to review an Office Action response.

In a typical Office Action response, the two most important sections are the claim amendments and remarks.

How to Review Claim Amendments in an Office Action response

Most examiners will reject your patent application on grounds that the claimed invention is not unique. Known as a Section 102 rejection, anticipation means that everything recited in a particular claim can be found in a single prior art reference. In other words, an anticipated claim is not novel. Obviousness under Section 103 typically involves a combination of prior art references that the examiner cobbled together to find all the elements of a claim. Whether the refusal is based on anticipation (Section 102) or obviousness (Section103), the examiner is basically saying that a rejected claim is not new.

Therefore, a common tactic in response to such rejections based on the prior art is to amend the claims to include features that are not shown or suggested in the prior art references cited by the examiner.

For example, suppose independent claim 1 covers a device and recites a combination of three features, ABC. In the Office Action, the examiner rejects Claim 1 for being anticipated by Prior Art Reference A allegedly showing ABC.

In response, you amend Claim 1 by adding D so that it now covers the combination ABCD. The logic is that the prior art references do not show this new combination with D added.

How do claim amendments open doors for competitors to design around your patent?

How will such a claim amendment affect your potential patent rights? By adding D to Claim 1, a competitor’s product would now have to include feature D in addition to ABC in order to infringe.

Do you see what just happened here? Original Claim 1 only required ABC. So a competing product having only those three features would infringe. Since amended Claim 1 now requires an accused product to include ABCD, a competitor can omit feature D in their product in order to avoid infringing amended Claim 1.

Adding new features, therefore, will narrow the scope of independent claims. Ask yourself, how can competitors possibly avoid the new features now being claimed to overcome the prior art rejections?

How to Review Remarks in an Office Action response

Arguments in an Office Action response serve an important purpose in trying to persuade the examiner that your claims are allowable. In my experience, it is more effective to combine solid technical arguments with meaningful claim amendments. Arguments without claim amendments typically do not make much progress. Let me explain why.

Examiners are human. When a response includes claim amendments, the applicant is making a concession. In essence, the applicant is implicitly acknowledging that the prior version of the claim was not good enough. And by amending the claim to include new features, however minor, you are humbly providing a path for the examiner to save face.

When an OA response contains only arguments, you better make sure to present some seriously compelling technical reasons as to why the claim limitations are not found in the prior art. Such a response might make sense if you are close to filing an appeal and need to introduce any remaining arguments that haven’t already been made.

As you’re reviewing arguments, keep an eye out for a few issues. First, do not argue points that are missing from your claims. This is a common error that most examiners will catch.

Second, be careful of saying too much. If and when your patent is being enforced against an accused infringer, such as in a patent infringement litigation in federal court, your past Office Action arguments will be scrutinized. Some argument made regarding a claim amendment may come back to haunt you as opposing counsel seeks to limit the scope of that claim term using your past remarks. Office Action arguments should be succinct. Of course, the tone of the writing should always be respectful.

Need help responding to a difficult Office Action or Examiner?

Send a copy of your Office Action to US patent attorney Vic Lin by email at vlin@icaplaw.com. We’ll take a brief look free of charge and see if we can help. You can also call (949) 223-9623 and ask how we might be able to help get past your patent rejection.

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Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys work as a team to equip startups and founders with solid IP rights that facilitate funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com