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Basis for rejection

Definition

The specific legal grounds a patent examinerexaminerThe USPTO official who reviews a patent application and decides whether to grant it.Read more → cites when refusing to allow a claimclaimA numbered sentence at the end of a patent that legally defines what the inventor owns. The most important section.Read more →. Common bases include lack of noveltynoveltyThe requirement that an invention be different from anything publicly known before its priority date.Read more → (35 USC § 102), obviousnessobviousnessA 103 rejection: the invention would have been obvious to a skilled person who combined existing prior art. The most common rejection in patent prosecution.Read more → (35 USC § 103), failure to fully describe the invention (35 USC § 112), and unpatentable subject matter (35 USC § 101). An office actionoffice actionAn official letter from the USPTO during examination, usually rejecting some or all claims and explaining why.Read more → will state the basis for each rejection, and applicants must address each one in their response.

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Claim

The numbered sentences at the end of a patent that define exactly what is legally protected. Claims are the only part of a patent that determine infringement — if a product or process doesn't fall within the scope of at least one claim, there is no infringement. Every other part of a patent (abstract, drawings, specification) exists to support and illuminate the claims.

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Examiner

A USPTO employee trained in a specific technical field who reviews patent applications for compliance with patent law. Examiners search prior art, write office actions rejecting or allowing claims, and conduct interviews with applicants or their attorneys. The examiner assigned to your application has significant discretion in how they interpret your claims and apply prior art.

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Novelty

The requirement that an invention must be new — not previously known, used, or disclosed publicly anywhere in the world before the filing date. Under the America Invents Act (2013), the US uses a first-to-file system: the applicant who files first gets priority, regardless of who invented first. Even the inventor can destroy novelty by publicly disclosing the invention more than a year before filing.

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Obviousness

A grounds for rejection under 35 USC § 103 when an invention, while not identical to any single prior art reference, would have been obvious to a person having ordinary skill in the art at the time of invention. Examiners frequently combine two or more prior art references to make an obviousness rejection. It is the single most common rejection in patent prosecution.

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Office action

A written communication from a USPTO examiner to a patent applicant, typically containing rejections, objections, or requirements for the application. A "final office action" signals that the examiner has given the applicant one more chance to respond before the application is abandoned. Applicants generally have three months to respond (extendable to six months for a fee).

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Patent

A government-granted right that gives an inventor the exclusive right to prevent others from making, using, selling, or importing a patented invention within the country that granted the patent, for a limited time. A patent does not give the owner the right to practice the invention — only the right to exclude others. The US issues three types: utility, design, and plant patents.

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