What Is a 102 Rejection?

DEREK FAHEY, ESQ.

A rejection under 35 U.S.C. § 102 means the examiner believes a single prior-art reference discloses every element of a patent claim. Because patentability requires novelty, a claim cannot be allowed if one qualifying reference anticipates the claimed invention.

Understanding Prior Art

Prior art generally includes patents, published applications, printed publications, public uses, sales, and other publicly available information that predates the relevant filing date. The examiner must identify one reference that teaches each limitation of the rejected claim, either expressly or inherently.

Responding to The Rejection

Applicants typically respond in one or both of two ways. First, they may argue that the cited reference does not actually disclose every claim element, is not legally available as prior art, or does not teach the claimed arrangement. Second, they may amend the claims—using support already present in the application—to distinguish the invention from the reference.

A strong response requires a limitation-by-limitation comparison of the claim and the cited disclosure. The best strategy depends on the strength of the examiner’s reading, the commercial importance of claim scope, and the availability of supported narrowing language.