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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.

Related terms

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Broadest reasonable interpretation

A standard the USPTO uses during examination to interpret claim language. Examiners give claim terms the broadest meaning a person skilled in the art would reasonably understand from the specification — not the narrowest. This is intentional: if a claim is too broad it should fail during examination, not slip through and later cause harm. Applicants can argue against an overly broad interpretation by pointing to the specification or adding clarifying language.

Abstract

A brief summary (300 words or fewer) that appears at the top of every patent. The abstract describes what the invention does in general terms. Legally, it has almost no weight — courts use the claims to determine what a patent covers, not the abstract. The abstract is useful mainly for quickly scanning patents during a prior art search.

Anticipation

A legal standard for rejecting a patent claim. If every element of a claim was already disclosed in a single prior art reference — in a patent, article, or product — the claim is "anticipated" and cannot be patented. Anticipation requires a single source to contain every element; if you need two sources, it's an obviousness argument, not anticipation.

Appeal

A request to have a patent examiner's rejection reviewed by a higher authority. After receiving multiple rejections, an applicant can appeal to the Patent Trial and Appeal Board (PTAB) within the USPTO, and from there to federal court. Appeals are expensive and slow, but sometimes necessary when an examiner applies the law incorrectly.

Art unit

A group of patent examiners at the USPTO who specialize in a particular technology area. Each application is assigned to the art unit whose examiners are trained in the relevant field. The art unit assignment matters because examiner expertise — and rejection rates — vary significantly across technology areas.

Assignee

The legal owner of a patent, who may or may not be the inventor. When an employee invents something in the course of their employment, most companies require inventors to assign patent rights to the employer. The assignee appears on the patent document and has the right to license or enforce the patent.

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