Patents - Fundamentals of Industrial Chemistry: Pharmaceuticals, Polymers, and Business - page 40

How broadly to claim an invention in a patent application is an important
decision. If you claim too narrowly you may open up the area for competitors
to practice variants outside the claims. If you claim too broadly, there is
a greater chance that there will be prior art that causes your claims to be
rejected. Even if your claims are allowed, there is a possibility that your
patent may be later invalidated.
When a patent application is filed with the USPTO, then it is considered
patent pending. A patent examiner looks at the claims and can allow them.
More commonly, the patent examiner either raises some objections, perhaps
to wording, or disallows some or all of the claims. For example, an examiner
may object to claims as being indefinite. If a claim states about 10% to
about 20%, the examiner may object that the term “about” is indefinite. The
applicant can either argue that the meaning is clear, perhaps by pointing
to the wording in the detailed description. Alternatively, the applicant can
amend the wording and remove the modifier “about.”
If the examiner deems that there is more than one independent invention
and that there is a burden on the examiner if they are not separated, the
examiner may restrict his examination to a single set of claims and require
the applicant to file a second application for the other claims that cover a
second invention.
The examiner can reject the claims based upon novelty, usefulness, or
obviousness. In doing so, the examiner typically recites the portion of patent
law that forms the basis for the rejection. For example, a novelty rejection
is a 102 rejection after 35 U.S.C. § 102, Conditions for patentability; novelty
and loss of right to patent. An obviousness rejection is known as a 103
rejection. Such a rejection should consider: the scope and content of the prior
art, the differences between the prior art and the claimed invention, the level
of ordinary skill in the pertinent art at the time the invention was made, and
whether any objective evidence of non-obviousness exists. The examiner
can combine several references when making an obviousness argument but
it should be reasonable for one skilled in the art to combine the references.
If a patent application is rejected by the examiner, the applicant has
an opportunity to respond. For example, in an obviousness rejection the
applicant can argue that it is not reasonable to combine references or that
the references do not show what the examiner has concluded they show. The
applicant needs to show that the invention is non-obvious in light of the prior
art. Arguments against a 103 rejection might include unexpected results,
commercial success, long-felt need, or the failure of others. Sometimes
claims are amended or cancelled based upon the examiner's rejection. The
examiner considers the applicant's arguments and then either allows the
claims, issues a second rejection, or issues a new rejection. This process
involving the back and forth arguments between the examiner and the