Novel invention? What is a Section 102 novelty rejection?

What is a novel invention?

Patent novelty refers to the uniqueness of an invention, but it’s actually much more specific. An invention is novel if no single prior art reference discloses all the components that form the claimed invention.

So, the two critical pieces of information that must be analyzed to determine novelty are:

  1. patent claims; and
  2. prior art.

When a patent examiner assesses the potential novelty of a patent-pending invention, the examiner compares the claims to the prior art.

What is anticipation or lack of novelty?

Anticipation is the opposite of novelty. If a patent examiner believes that a single prior art references shows all components of a particular claim (aka “claim limitations” or “claim elements”), the examiner will issue an Office Action stating that the claim is rejected under Section 102 as being anticipated by said prior art reference.

For example, suppose your invention comprises three components – A, B & C – but your patent application includes an independent claim that recites merely A and B. If the examiner can find a prior art patent that shows both A and B, the examiner will reject this independent claim as being anticipated by the reference.

Anticipation thus requires that all elements in a claim are found in a single piece of prior art.

How to argue an invention is novel to overcome a 35 USC Section 102 rejection

One way to respond to a Section 102 rejection is to argue that the prior art reference does not show all the claim elements seen by the examiner. In our above example, an applicant could argue that the prior art patent shows only A, but not B. Patent examiners will not be convinced by conclusory statements, so the applicant should elaborate on why the prior art reference fails to show a particular claim element. It may help to explain that what the examiner see as element B is in fact something entirely different.

Another option is to amend the claim. An applicant can amend a claim to clarify an element, add a new element or do both.

In our example above, if the cited prior art patent fails to disclose C, the applicant can amend claim to recite ABC. The response should remarks pointing out why C is missing in the prior art patent.

Novelty Search: Anticipating Anticipation

Also known as a novelty search, a patentability search can be helpful in identifying potential anticipatory prior art references. While a patentability search does not guarantee the grant of a patent, it can help an inventor make an informed decision on whether or not to apply for a patent.

Novelty searches also enable better claims to be submitted with the initial filing of a non-provisional application, thereby reducing the risk of a Section 102 rejection in a first Office Action. For example, if a search uncovers a prior art publication that already teaches AB, then it wouldn’t make sense to submit an independent claim reciting AB alone. Knowledge of the prior art enables the inventor’s patent attorney to start off with claims that recite a combination of elements not found in the search (e.g., ABC).

Not sure if your invention is novel?

Email US patent attorney Vic Lin at vlin@icaplaw.com or call (949) 223-9623 to explore whether your invention is novel and possibly patentable. Our firm charges flat rates for filing patent applications.

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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.
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2023-02-20
We have been happy client for 10+ years. Awesome Patent Law Firm!
Hanson Chang
Hanson Chang
2023-02-16
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Genevieve Springer
2022-09-09
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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.

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