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Failure to Provide Reasoning for 35 U.S.C. § 102 Rejection


When rejecting claims under 35 U.S.C. § 102, Examiners often cut-and-paste large sections of the claims and appent short citations thereto without providing reasoning. It is often difficult to determine which features of the cited art that the Examiner believes to correspond with the claimed features. While the MPEP does not explicitly require Examiners to provide reasoning for rejections under 35 U.S.C. § 102, we believe it is arguable that reasoning should be required in light of the Zurko decision and Supreme Court reasoning. Further, the requirement that each and every claim element must be set forth in as complete detail in the cited art as in the claims is also often not met. Accordingly, it may be beneficial to present arguments along the lines of the following in response to a 35 U.S.C. § 102 rejection that fails to provide such reasoning.

Example Argument

Applicant respectfully submits that the Office Action failed to establish how “each and every one” of the claimed features is believed to be disclosed by [REFERENCE]. In the Office Action, the recitations of the claims appear to be “cut and pasted” onto pages [PAGE NUMBERS] of the Office Action with brief parentheticals appended to the end of each line of the claim. These parentheticals cite figures, sections and/or features discussed in [REFERENCE]. However, no reasoning is provided explaining why the citations from [REFERENCE] are believed to disclose the claimed features in each line, nor are the citations matched to the features of the claims. Applicant respectfully submits that the rejection is improper at least in view of the following.

MPEP § 2131 states that “‘[a] claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently [See related post] described, in a single prior art reference.’ Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987)” (emphasis added). “‘The identical invention must be shown in as complete detail as is contained in the ... claim.’ Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir. 1989)” (emphasis added). Moreover, “[e]very element of the claimed invention must be literally present, arranged as in the claim.” Id. (emphasis added). In the present case, the Office Action has not established that each element of the claims is disclosed in [REFERENCE]. The Office Action merely appended a citation to the end of each paragraph of the claims with no reasoning or association with the claimed features. As such, Applicant cannot reasonably determine which “element” of the claim is believed to correspond with which section, figure or feature cited in the rejection. In other words, Applicant is not put on notice as to the rationale behind the rejection and cannot adequately determine whether such basis is proper.

Additionally, it appears that the United States Supreme Court values “reasons” in a rejection, and would likely require that such reasoning be applied to rejections under 35 U.S.C. § 102 if presented with the issue, rather than just rejections under 35 U.S.C. § 103. For instance, MPEP § 2143, citing KSR, states that “[t]he key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit” (emphasis added, see also KSR Intl Co. v. Teleflex Inc., 82 USPQ2d 1385, 1395-97 (2007)). While KSR and the cited section of the MPEP are directed to obviousness rejections under 35 U.S.C. § 103, it is apparent that the Supreme Court believes that a clear articulation of reasons is "the key" to supportable rejections by the USPTO.

Further, failure to specifically identify which features of [REFERENCE] are believed to disclose each element of the claims likely renders the Office Action “arbitrary and capricious”, and therefore invalid, under the Administrative Procedure Act (5 U.S.C. § 706), a standard to which all Actions by the USPTO must adhere (see Dickenson v. Zurko, 527 U.S. 150 (1999)). Without proper guidance as to which “element” of the claim is believed to correspond with which section cited in the rejection, Applicant is forced to guess which features in the cited art the Examiner believed to disclose each of the claimed features.

Because reasons for the rejection were not presented in the Office Action and Applicant cannot reasonably determine which feature of [REFERENCE] is believed to correspond with which feature recited in the claims, it is respectfully submitted that the rejection is improper and must be withdrawn.