How to Respond to A Novelty or Anticipation Patent Application Rejection

Understanding Anticipation in Patent Law

So far, I’ve covered what a patent rejection is, what an objection is, what an office action looks like, and the general formatting of a response to an office action. In this episode, I will go into more detail about responding to a specific type of patent rejection called a Section 102 rejection, also known as a lack of novelty or anticipation rejection.

The term anticipation has a different meaning in patent law than in everyday language. Normally, when you anticipate something, you are expecting it to happen soon. In the patent world, anticipation means that what you are claiming as your invention already exists in the prior art.

Example of an Anticipation Rejection

Let’s say that my invention is a mechanical pencil with a long cylindrical body, an eraser, a button on the side of the body to advance the lead, and a hole at the tip where the lead comes out. If the examiner finds a prior patent that discloses a mechanical pencil with all of these features, I will receive an anticipation rejection.

The examiner will typically state that, under 35 U.S.C. §102, my claim lacks novelty because it is anticipated by Patent X. The examiner will list each limitation in my claim and where Patent X discloses it. For example:

• Patent X discloses a long cylindrical body in paragraph 1 and in Figure 1, reference number 5.

• The eraser is shown in Patent X in paragraph 15 and in Figure 2, reference number 10.

• The button on the side of the cylinder is disclosed in paragraph 20 and in Figure 3.

• The hole at the tip is disclosed in paragraph 25.

Step One: Reviewing the Examiner’s Citation

The first thing you should do is obtain a copy of the prior art reference cited by the examiner. You can retrieve it from the patent office website or another database. Carefully review the reference to determine whether it actually discloses each and every element of your claim.

There are two possible scenarios:

1. The examiner is incorrect, and the cited prior art does not disclose all elements of your claim.

2. The examiner is correct, and the cited prior art does disclose all elements of your claim.

Scenario One: The Examiner is Incorrect

Suppose you read Patent X and find that it does not actually disclose what the examiner claims it does. For example, your claim specifies that the button to advance the lead is on the side of the cylindrical body, but in Patent X, the button is located at the end of the pencil.

For an anticipation rejection under 35 U.S.C. §102, the prior art must disclose each and every element of your claim exactly as written. If it does not, the rejection is improper.

Even if a button on the end of a pencil is functionally similar to a button on the side, that is a Section 103 (obviousness) rejection, not a Section 102 (anticipation) rejection. If you successfully argue that the prior art does not anticipate your claim, the examiner may issue a new rejection based on obviousness, which I will discuss in future episodes. However, the first step is to eliminate the anticipation rejection.

Drafting Your Response for Scenario One

The shorter and more direct your response, the better. In your response, include a heading such as:

Rejection Under 35 U.S.C. §102 in View of Patent X.

You may also add a subheading:

Patent X Does Not Disclose Each and Every Element Required by the Claims.

Then, you should summarize the rejection:

The Office rejected Claim 1 under 35 U.S.C. §102 as being anticipated by Patent X.

You can cite the relevant section of the Manual of Patent Examining Procedure (MPEP):

To reject a claim as anticipated by a reference, the disclosure must teach every element required by the claim under its broadest reasonable interpretation. MPEP Section 2131.

You may also cite case law, such as:

• Richardson v. Suzuki Motor Co.: "The identical invention must be shown in as complete detail as is contained in the ... claim."

• Verdegall Bros. v. Union Oil of California: "A claim is anticipated only if each and every element as set forth in the claim is found ... described in a single prior art reference."

• Rockwell Intern. Corp. v. U.S.: "For anticipation, each and every claimed limitation must be found in a single reference."

After citing the rule, explain why the examiner’s reference does not meet this standard. For example:

On page 3 of the office action, the examiner asserted that Patent X teaches a button on the side of the pencil body. However, Patent X does not disclose a button on the side of the pencil body. As shown in Figure 5, Patent X only discloses a button at the end of the pencil. Applicant respectfully submits that the prior art does not disclose each and every element to the satisfaction of the MPEP. Accordingly, it is respectfully requested that the rejection be withdrawn.

Scenario Two: The Examiner is Correct

If the examiner’s cited reference does disclose all elements of your claim, you must amend your claims to distinguish your invention. However, you can only amend your claims using details that were already included in your original application.

For example, if your original application mentioned a variation where the pencil includes a compartment for whiteout, you could amend your claims to add a "liquid storage compartment within the elongated cylindrical body." This additional feature would distinguish your invention from Patent X.

Drafting Your Response for Scenario Two

Use the same heading:

Rejection Under 35 U.S.C. §102 in View of Patent X.

Follow with a subheading:

As Amended, Patent X Does Not Disclose Each and Every Element Required by the Claims.

Then, acknowledge the examiner’s comments and introduce your amendment:

Applicant thanks the examiner for the comments. Applicant has amended Claim 1 to now require a liquid storage compartment. Patent X does not disclose a liquid storage compartment and therefore does not anticipate amended Claim 1.

Applicant requests reconsideration of the claims and withdrawal of the rejection.

It is important to avoid making unnecessary admissions. Do not state that the examiner was correct in rejecting your claim. Instead, consider stating:

Applicant disagrees with the Examiner’s assertion that Patent X discloses X, Y, and Z, but to further prosecution and receive a notice of allowance, Applicant has amended the claims. Applicant reserves the right to file continuation applications with the original claims.

This keeps your options open for future prosecution.

Conclusion

This is the basic approach to responding to an anticipation rejection. Compared to an obviousness rejection, which I will cover in later episodes, anticipation responses are relatively straightforward since they rely on an objective analysis of whether prior art discloses all elements of your claim.

I’m Adam Diament, and until next time—keep on inventing!