How to Win a Patent Application Argument

Will arguments be necessary in your utility patent application?

Nine out of ten utility patent applications will get rejected at least once. Many will get rejected multiple times. So, yes, arguments will be required in the vast majority of utility patent applications. Moreover, the strength of your argument will have a direct bearing on whether or not your patent will be granted.

How claim amendments lead to stronger patent arguments

Before delving into patent arguments, we cannot ignore a key strategy that can make your arguments more persuasive. I’m now in my third decade of practicing patent law, and one reality has remained constant throughout my patent prosecution career. Examiners are human . . . at least for now. Therefore, the psychological aspect of convincing human beings that they are wrong cannot be overlooked. You are not dealing with a robot. Do not expect that an input of information will automatically result in a desired output as if they were a machine.

So how does this psychological stuff relate to claim amendments? Well, it’s a matter of saving face. When you amend the claims in conjunction with making arguments, you are making a concession. In essence, you are giving up some ground and seeking a compromise. An experienced patent attorney can carefully craft claim amendments that look like concessions, but really do not limit the scope significantly.

An Office Action response that consists entirely of arguments without claim amendments is like yelling “You’re wrong!” to the other side without acknowledging any of their points. How well does that kind of argument work in real life?

How to win the novel patent argument (Section 102)

An invention must be novel in order to be patentable. Under 35 USC 102, a lack of novelty means that all elements recited in a claim are shown in a single prior art reference. For example, suppose you have a claim that recites features A, B and C. If that claim is rejected for lacking novelty, it means that the patent examiner allegedly found a single prior art reference that shows A, B and C. You would receive an Office Action containing claims rejections under a Section 102 heading.

To counter a Section 102 claim rejection, you need to prove to the examiner that the claim contains at least one feature not shown in the cited prior art reference. As discussed above, one effective way to accomplish this is by adding at least one feature to the claim and arguing that the amended claim is novel.

How to win the nonobvious patent argument (Section 103)

Not only must an invention be novel, but it must also be nonobvious in order to be patented. Generally, an obviousness rejection under Section 103 is more difficult to overcome than a lack of novelty rejection. To illustrate, let’s go back to our claim that recites ABC.

Suppose the examiner finds a first prior art reference that shows A and B, and a second reference that shows C. To reject your claim as being obvious, the examiner will combine the first and second prior art references to arrive at your claimed invention of ABC.

You can counter an obviousness rejection with multiple strategies concurrently. Again, I would explore the possibility of amending the claims and arguing the nonobviousness of the amended claims. The amendment-plus-argument approach can make a gray area more black-and-white. For example, if you amend your claim to add D so that the scope is now ABCD, it is more of a black-and-white argument that the cited prior art combination fails to show feature D.

Do not ignore dependent claims. If the examiner still thinks your independent claim is obvious, there may be some wiggle room to show that your dependent claims are nonobvious. Point out how certain dependent claims include significant features.

How to win the eligible subject matter argument (Section 101)

This is a tricky patent rejection. Ongoing developments in case law and examination rules continue to shape this fuzzy area of patent law known as subject matter eligibility. A more compelling response to a Section 101 rejection may require awareness of the latest legal developments. Perhaps, the Federal Circuit will issue a new opinion on what is or isn’t an abstract idea, or what qualifies as something more than an abstract idea.

An effective response to a Section 101 rejection will be highly fact specific. You cannot take a one-size-fits-all approach in arguing eligible subject matter. For example, it might make sense to craft eligibility arguments that take novelty into account.

Should patent arguments be more legal or technical?

Trademark examiners are lawyers, and patent examiners are not. So a response filled with a bunch of legal arguments will probably have little persuasive effect. Patent examiners are focused on the technological aspect of inventions, not on legal standards.

It might make sense to add some case law if, for example, it helps to shift the burden back to the examiner. For example, if the examiner is taking judicial notice of a certain feature, then it might be worthwhile to insert some legal precedent to argue that the examiner has not met their burden.

Need to win your patent argument?

Contact US patent attorney Vic Lin at vlin@icaplaw.com or call (949) 223-9623 to see how we can help you win the argument and get your utility patent granted.

How useful was this post? (Did you find the information you needed?)

Click on a star to rate it!

Thank you for rating my post!

We want to do better.

Could you tell us what was missing in our post?

Frenda Williams
Frenda Williams
2023-02-21
I have had the pleasure of working with Vic and his team at Innovation Capital Law Group on Trademark creation and contracts. As a solo and non-tech founder, the assistance, guidance and recommendations from Vic and his team have been INVALUABLE. And, with the knowledge that I have a Solid, well versed and caring legal team I can turn to, I have the confidence I need to navigate the intricacies of the tech industry as a solo founder. With that being said, If you’re a startup and you’re looking for a legal team that speaks your language, knows the industry and makes you feel like family…. Innovation Capital Law Group is a Perfect fit for you, your company and your team. Five out of Five Stars… don’t let their brilliance blind you 😁
Shiwei Liu
Shiwei Liu
2023-02-20
Excellent service and quick response. Lots of informative documents on its website.
Chang Chien Michael
Chang Chien Michael
2023-02-20
I have worked with iCap for more than 7 years. I am very glad with his professional knowledge that 7 utility patents were granted by USPTO. Vic and his team are very efficient and knowledgeable. Every time he can transcribe my design idea perfectly in two weeks and file it with no rejection from USPTO. The other service including the granted patent following up is always in time to remind me to take actions. That is why I still stick on iCap as my first priority when I want to file a US patent.
Mats Johansson
Mats Johansson
2023-02-20
We have been happy client for 10+ years. Awesome Patent Law Firm!
Hanson Chang
Hanson Chang
2023-02-16
Glad to write a review for Innovation Capital Law Group. We previously worked with a big law firm (2200 employees) on our patents, and decided to shift over to Innovation Capital. It was a great decision, this team got our patents done faster, more effectively, at a lower cost, and with broader claims. Win all around
Genevieve Springer
Genevieve Springer
2022-09-09
Clear, discernible tools and strategies couched within a business conceived from a genuine interest in doing right by founders.
InPlay Inc
InPlay Inc
2022-06-30
Vic and his team have been providing us with the best patent application experiences we could ever have in our entire career life! Their professionalism and technical knowledge have really saved us a lot of communication effort and time on the applications. Definitely highly recommend if anyone is looking for help with IP protection for their business.
Meg Crowley
Meg Crowley
2022-03-05
After working with Vic and his team at Innovation Capital Law Group, our organization is confident our trademarks were solid and protected. Thank you team.
Andy Dong
Andy Dong
2022-02-28
I have been using Innovation Capital Law Group for a few years and continue to use them. They have provided an excellent services on our legal issues including intellectual properties and patents . They are very responsive, easy to work with and very competent . I highly recommend them.

Follow us

Copyright © Vic Lin 2023