In practice, which patent rejection reason is the hardest to address and overcome?

Question

I'm referring to:

101: utility (and others)

102: lacking novelty

103: obviousness

Answer 1

From my personal experience it is both 101, when the invention is a computer-implemented invention, and 103 rejections.

The 101 rejections are a nightmare for me because with them it is alleged that the invention is nothing more than an abstract idea, yet most of the times that makes no sense from my point of view because the invention is a computer-implemented invention that solves a technical problem, i.e. has a technical effect, which is the key element in most jurisdictions worldwide. So if the invention solves a technical problem then it automatically cannot be an abstract idea even if implemented in a general-purpose computer.

The concept of 'abstract idea' in steps 2A and 2B of the two-part analysis that was created after the Alice Corp vs. CLS Bank decision is quite vague. No matter how much you show that the invention has some technical purpose, examiners may maintain the rejection because they can without providing much explanation backing up such statement. Hopefully the 'abstract idea' concept or the two-part analysis will be revised in the future. The existence of such analysis is a great addition, but since its inception many inventions that are actually abstract ideas or business methods have been granted patents, so in my view the parameters for establishing what is an 'abstract idea' are not set correctly. We have a much clearer set of rules for this question at the EPO (I think that the USPTO will at some point reproduce the European system to address this issue, even if worded differently).

Like 101 and unlike 102 rejections, the 103 rejections can also be tough ones because they stem from a subjective analysis. It is very easy for the examiner to simply find the claimed features in whatever documents and argue that the person having ordinary skill in the art would have combined the documents to arrive at the invention. And if some features are not found in the prior art, the examiners can go ahead and say that the person having ordinary skill in the art would find or stumble upon the missing features during its routine activities, and that's it. It does not matter whether the documents relate to different technical fields or not, or that the teachings of the documents are incompatible.

For me, the problem is that the figure of the 'person having ordinary skill in the art' has lost its meaning over time and nowadays obviousness is not assessed from phosita's standpoint despite the explicit reference to it in 103 rejections. This means that the obviousness analysis is frequently biased. In that case, examiners might not change their opinion regardless of whether you rely on legal provisions or provide sound remarks to defend the non-obviousness of the invention. At the EPO there is the so-called problem-and-solution approach that lowers the subjective component in the obviousness analysis, but even with that method we get biased rejections too.

Answer 2

This is a somewhat arbitrary question and I think you’ll get different answers from different people, based on their area of expertise.

In order from most to least difficult to argue against, I would rank them as §101, §112, §102, §103.

In order from most to least attorney time spent overcoming them, I would rank them as §103, §112, §102, §101.

I'm not a patent attorney, but have worked with them on hundreds of US patents - some were my own patents and some were patents that they needed an engineering perspective on. My reasons for the rankings I give are based on my own experience and not on any inside knowledge of USPTO policy:

§101 - I see §101 rejections the least, but if something isn't patentable subject matter, it's very hard to come up with an argument as to why it should be. I've only seen it successfully argued once, when the patent examiner claimed no one wanted a particular solution, and the patent attorney showed them several websites discussing how to approach the problem - arguing that the fact that someone is discussing it shows that someone will find our solution useful.

§102 - I've seen this occasionally when the patent application very closely matches an existing invention. We can almost always find some small facet of our invention that isn't included in the prior art or find some small distinction between our invention and the prior art. It leads to narrower claims, but it's a straightforward exercise.

§103 - I've seen this when the patent examiner can combine two or more existing inventions to produce the invention in question. To overcome it you either must show that it wasn’t obvious to combine the pieces of prior art, or find some difference between your invention and the combined prior art. It’s the same exercise as overcoming a §102 rejection, but much more tedious. §103 rejections are the most common ones I see.

§112 - I've also seen quite a few rejections for §112 because the specification of the patent doesn't provide enough detail to support the claims. In layman terms, you weren't specific enough. In patent terms, you didn't enable a person of ordinary skill in the art to reproduce your invention without undue experimentation. Whenever we’ve encountered a §112 rejection, our attorneys have limited the claims to what was specified.