Claim Rejections-Amend or Argue?

• Author: Slusky, Ronald D.
• Pages: 219-226

CHAPTER EIGHTEEN

Claim Rejections—Amend or Argue?

The problem-solution paradigm is central not only to claiming the inven-

tion in the first instance, but also to amending the claims during prosecu-

tion, should that prove necessary.

This chapter presents an overview of the six main options available

when a claim is rejected as unpatentable under §102 or §103. The next

chapter describes how the problem-solution paradigm is used to identify

the best way(s) to amend a claim, should amending prove to be the

appropriate option.

In both chapters, the term “cited prior art” includes both (a) subject

matter disclosed in a single prior art reference and cited in a §102 rejec-

tion and (b) subject matter that results from modifying or combining

teachings in one or more references as advanced by the examiner in a

§103 rejection.

Four Questions, Six Options

The answers to four questions determine which of six options should be

taken when a claim is rejected under §102 or §103. The four questions are

1. Is the examiner’s position on obviousness well founded? (§103

rejections only)

2. Does the claim read on the cited prior art?

3. Is the cited prior art the same subject matter intended to be cap-

tured by the claim (i.e., does it disclose the inventive concept)?

4. Does the invention predate the cited prior art reference(s)?

And the six options are

1. Argue the nonobviousness of combining or modifying prior art

teachings used to reject the claim (§103 rejections only).

2. Argue that the rejected claim does not read on the cited prior art.

3. Avoid the cited prior art by amending the claim to retreat from the

invention boundaries previously intended to be staked out.

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