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Patent prosecution strategy and tactics – 102 vs. 103 December 28, 2011

Posted by Brian Schar in Patent prosecution.

Conventional wisdom is that a 102 rejection is somehow more advantageous to the applicant than a 103 rejection, and that 103 rejections are more difficult to overcome.  I disagree with that.

The options for handling a 102 rejection are few: amend, argue that the Examiner’s interpretation of the claim is broader than the broadest reasonable interpretation, or argue that the prior art reference does not actually describe what the Examiner says it describes.  That’s about it.  When the Examiner makes a 102 rejection, he or she is like a quarterback in the pocket.

However, your options for handling a 103 rejection are more numerous.  MPEP 2143.01 alone, analyzed at length elsewhere in this blog, provides 2 major and 4 minor avenues of attack against a 103 rejection.  MPEP 2143.01(V)-(VI) are not even limited to the scope of the claims, and allow the Applicant to argue that the references should not be combined for reasons unrelated to the specific language of the claims.  One can make analogous art arguments against a 103 reference, in contrast to 102 in which the field of the prior art reference is completely irrelevant.  In a 103 rejection, the Examiner must provide sufficient technical reasoning for combining references, reasoning which is often (if not usually) absent.  

The strategy, then, is to flush the Examiner out of the 102 pocket into a 103 rejection.   The tactics are the arguments used to overcome the 103 rejection.

I’ve made arguments in interviews that have caused the Examiner to change a rejection from 102 to 103 in the subsequent Office Action.  Usually such arguments are met with some bafflement by the Examiners; I’ve heard in response statements like “your amendment/argument will overcome the 102 rejection, but almost certainly I will just make this a 103 rejection in the next Office Action.”  I just smile and nod, because that’s the strategy.


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