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I have an application that is now on its fifth rejection. In some cases, I have made amendments in light of the prior art, and in all cases, I have presented rebuttals for arguments raised by the examiner.

There are two main earlier patents presented as the core for the 103 rejections, but all but the first rejection subsequently rely on new patents or applications that are introduced for the first time in each rejection. Each rejection also starts with the phrase "The applicant's arguments have been fully considered ... but are moot in view of the following new ground of rejection."

As a result, I am now up to seven items in the prior art list (but in any one rejection only the core two and one new item are used).

Is there a point at which you can say, "You've had X shots - now you're out of bullets" or can this process go on forever? Or in other words, when can you argue that there are so many different 103 rejections with so many different prior art materials that surely the invention is not obvious?

Does anyone have any other advice on how to end this (other than abandonment)?

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  • The examiner is the only one between an invalid patent an the public which doesn't want invalid patents. It's sometimes unlucky, but the examiner can't just let you get a patent because it would be undue to further reject it or something like that. you could try having an interview to gauche if there is some reason behind the rejections you haven't seen yet.
    – user18033
    Commented Dec 5, 2019 at 7:08

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There is something called "compact prosecution" that encourages examiners to reject on all grounds in the first office action rather than come up with new references as the case proceeds. However, if some element mentioned in the specification is not initially in a claim then a reference that shows that element as old clearly does not belong in a rejection. If you keep amending to add new limitation to a claim, the examiner needs to keep searching to see if that new limitation is novel or not.

Prosecuting a patent application can often be frustrating and is not always successful. As an alternative I recommend not trying to do it yourself.

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  • I'm not adding anything new from the specification to the claims - all I've done is move elements from dependent claims into independent claims, or correct informalities. Some of the "informalities" are things that weren't mentioned prior to RCE, which therefore seem like they were possibly held in reserve in order to ensure that arguments didn't need to be addressed because it gave the opportunity to raise more prior art.
    – Keir Finlow-Bates
    Commented Dec 4, 2019 at 22:34
  • In that case your arguments may indeed be knocking down references and the examiner is looking for better references that you can't knock down.
    – George White ♦
    Commented Dec 4, 2019 at 22:58
  • @KeirFinlow-Bates This is exactly where actual patent attorneys and agents earn their fees. Both in writing rejection resistant claims and arguing their validity.
    – Eric S
    Commented Dec 5, 2019 at 23:26

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