The following is a companion resource for Patents Demystified that gives some examples of what Office Actions look like during the examination process and how rejections are structured by the examiner.
First Example Office Action Having Both Novelty and Obviousness Rejections
This first example Office Action comes from patent application number 13/860,533 entitled “Aerial refueling system and method,” which ultimately issued as patent 9,227,735. As indicated on page 2 of the Office Action, the application had 20 pending claims and all claims were rejected in the Office Action.
The discussion of the rejections begins on page 3, where claims 1-3, 7-14, 17, 19 and 20 are rejected under 35 U.S.C. 102 for being anticipated by patent publication 2006/0208132. In other words, the Examiner is arguing that claims 1-3, 7-14, 17, 19 and 20 are not novel in view of the technology disclosure in the specification and/or drawings of the publication of inventor Philip Jones’ patent application. In paragraphs 4-12, the Examiner points out specific parts of the Jones specification and/or drawings that supposedly teach the elements of 1-3, 7-14, 17, 19 and 20.
Starting on page 4, at paragraph 13 of the Office Action, the Examiner then rejects claims 4-6, 15, 16 and 18 under 35 U.S.C. 103 as being unpatentable in view of the Jones reference discussed above and in further view of patent publication 2006/0038076. In other words, the Examiner is arguing that claims 4-6, 15, 16 and 18 would be obvious to one of ordinary skill in the art if such a person would looked at and combined the teachings of these two patent publications. In paragraphs 16-19, the Examiner points out specific parts of one or both of these publications that supposedly teach the elements of the claims 4-6, 15, 16 and 18.
For more details on novelty and obviousness rejections and how to respond to them, take a look at pages 195-207 of Patents Demystified.
Second Example Office Action Having Novelty Rejections With Some Claims Allowable
This second example Office Action comes from patent application number 14/517,870 entitled “Aerial insect release apparatus.” As indicated on page 2 of the Office Action, the application has 20 pending claims, but claims 8-20 were previously withdrawn (due to a restriction requirement) and therefore only claims 1-7 are being examined. Of claims 1-7, claims 1 and 4-7 are rejected and claims 2 and 3 are objected to.
The discussion of the rejections begins on page 3, where claims 1 and 4-7 are rejected under 35 U.S.C. 102 for not being novel in view of issued patent 6,056,237. In section 3, the Examiner points out specific parts of the specification and/or drawings of this issued patent that supposedly teach the elements of claims 1 and 4-7.
However, on page 4, the Examiner indicates that claims 2 and 3 are objected to, but include allowable subject matter. This is a great result because although the patent application is not yet allowable, the allowable subject matter of claims 2 and/or 3 can be incorporated into other claims to make all claims allowable and ultimately lead to an issued patent. For more on the mechanics of how allowable claims can be used to gain allowance of an application, check out pages 208-211 of Patents Demystified. For an explanation of restriction requirements and why only claims 1-7 are being examined in this example, check out pages 214-216.