Patent Rejected for being obvious

Anticipation rejections and obviousness rejections are the two most common arguments used by the Patent Office in order to reject claims in a non-provisional patent application. Used alone or in combination, if an applicant is unable to overcome these rejections for any of their claims, then they will not be able to get a patent for their invention.

An anticipation rejection is a rejection under 35 U.S.C. 102 and is applied when the Patent Office makes the argument that the invention is anticipated (or is “not novel”) over a disclosure that is available as prior art before the effective filing date of the claimed invention. To reject a claim as anticipated by a reference, the disclosure must teach every element required by the claim under its broadest reasonable interpretation. Basically, the Patent Office is arguing that each and every feature in the rejected claim(s) are all found in a prior art reference.

An obviousness rejection is a rejection under 35 U.S.C. 103 and is applied when the Patent Office makes the argument that while the invention is not identically disclosed as set forth in 35 U.S.C. 102, the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Basically, the Patent Office is arguing that each and every feature in the rejected claim(s) are all found in a combination of prior art references.

How do you overcome a patent obvious rejection? 

While there are a number of ways to overcome anticipation rejections and obviousness rejections, there are two ways that typically offer the most success:

  1. Make an argument that the examiner is wrong and that the patents and references they found do not show each and every feature in the rejected claims, or
  2. Try to add in new features or elements to the claims which are not shown or taught by the patents the examiner found.

It is important to note that about 95% of patents received one or more anticipation rejections and/or obviousness rejections before they were allowed to issue. Therefore, if and when the Patent Office rejects claims in your non-provisional patent application, do not be overly discouraged but try to work with your patent practitioner to successfully overcome these rejections.