Your patent attorney just sent you an Office Action he or she received from the Patent Office for your patent application. Here are some of the types of objections and rejections you may be facing.
Objections to the Specification. These are typically minor corrections that the Examiner is requiring be made to the written description in your patent application. Often, the Examiner will state what specifically needs to be changed in order to overcome the objections. Examples include amending the title of your invention to be more descriptive, amending the abstract of your invention to be 150 words or less, and correcting minor typographical errors.
Objections to the Claims. Again, these are typically minor corrections that the Examiner is requiring be made to the claims in your patent application. Often, the Examiner will state what specifically needs to be changed in order to overcome the objection. Examples include providing proper antecedent basis for a claim recitation, correcting claim numbering and claim dependency, as well as correcting minor typographical errors.
Claim Rejections. There are five common claim rejections. Each of these rejections are based on a section of the US Patent Law: Section 101, Section 112 (first paragraph), Section 112 (second paragraph), Section 102, and Section 103 rejections. The first three types of rejections (Section 101 and 112) are typically formalities that can be easily dealt with by amendment. The Section 102 and 103 rejections are often referred to as “substantive” rejections and often require some creativity to amend the claims and argue the basis for patentability of your invention.
Your patent attorney can give you more guidance, and prepare the necessary Response with your input. You should not rely on anything here as specific advice for preparing a Response to an Office Action.
