Getting a rejection from an examiner can be frustrating. It is important to understand that the examiner is not rejecting your invention. The examiner is rejecting the wording of your claims in the invention. Claims that are too broad could lead to rejection. Also, this is not the end of the process but a starting point to figure out what the examiner wants the claim language to say for the claim to be allowed, which is the main focus of the examination process.
The goal of the examination process is for the patent examiner to clearly articulate any and all claim rejections as early in the process as possible so that the applicant and/or attorney has the opportunity to provide evidence of patentability and reply completely at the earliest opportunity. Then the examiner reviews all the evidence, amendments to the claims, and arguments responsive to any rejection before issuing the next Office action.
A claim can be rejected or objected. What is the difference? A “rejection” is the refusal to grant a claim because the subject matter of the claim is considered to be unpatentable. One of the most common forms of rejection is unpatentability in view of prior art. An “objection” is made if the form of the claim, which is different from its substance, is improper. The difference between a rejection and an objection is that a rejection, involving the merits of the claim, is subject to review by the Patent Trial and Appeal Board. The objection may be reviewed only by way of petition to the Director of the United States Patent Office. Therefore, an objection is more thought of as a “speed bump” in the patent application process wherein a rejection can be much more difficult.
The second action you receive from a patent examiner is most likely going to be a final rejection. This is important because after you receive a final rejection you are limited to what you can do as a matter of right. Once a final rejection has been entered, there is no longer any right to unrestricted further prosecution but it does not mean that no further amendment or argument will be considered. So even after a final rejection is received, there is still opportunity to work with the patent examiner to some limited extent, and appealing is always an option too.
An attorney can help you get your invention patented and advise you on what the next step may be.
