Patent Lawyer: Tips for overcoming 35 USC 102 novelty rejections

The Patent Lawyer is published by the APLF and has released Issue 2.  In an article on patent amendment practice, Stephen Favakeh provides some simple advice for overcoming novelty rejections.  Generally, a novelty rejection is easier to overcome than an obviousness rejection because novelty is determined by more objective standards.  However, when responding to an Office Action, you should not set your client up for an obviousness rejection.

It is usually not enough simply to list the limitations in the claim that are missing from the prior art reference, particularly when the differences are subtle.  Doing so may lead to a dismissal of the Section 102 rejection, but only at the cost of substituting a section 103 [obviousness] rejection. “Sure,” the examiner may say, “the prior art doesn’t exactly disclose the claimed invention, but it is obvious to fill in the gaps.”  To avoid this, explain why the missing limitations are significant.