Patent Examination and Basic Prosecution; Understanding Novelty and Obviousness Claim Rejections

When you file a patent application with the United States Patent and Trademark Office, the Patent Examiner will look at your patent claims and look for "prior art." The prior art can be other patents, patent application publications, technical papers, or even catalogs. If the Patent Examiner can find a single reference that teaches all limitations of the claim, the Patent Examiner can make a novelty rejection of that claim. For obviousness rejections, the Patent Examiner combines two or more references that, when combined, teach all limitations of the claim. Basic strategies for overcoming both novelty and obviousness rejections are provided in the video.

Timecodes

0:00 - Introduction
0:15 - The two types of patent claims; Independent and Dependent
0:38 - The Patent Examiner looks for prior art
0:55 - Novelty Rejections by the Patent Examiner
1:16 - Patent Examiner looks for claim limitations
2:40 - Obviousness Rejections
4:43 - Motivation to combine references in obviousness rejection
6:03 - Overcoming Novelty Rejections
7:39 - Examiner must interpret the claims (claim construction)
8:05 - Broadest Reasonable Interpretation (BRI)
11:21 - What claim interpretation is reasonable?
12:48 - Overcoming Obviousness Rejections

DISCLAIMER: The information contained in these videos is for information, educational and entertainment purposes only. IT IS NOT LEGAL ADVICE. Consult an attorney regarding your specific legal situation.

Cygan Law Offices PC is an intellectual property law firm founded in 2010 and provides patent, trademark and other intellectual property law services to businesses including start-ups, solopreneurs and independent inventors and product developers.

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