USPTO Rejection: 35 U.S.C. 102

Question

I got the examiner reply that claims was rejected under 35 U.S.C. 102.

I quote this from USPTO: “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.”

is above principle used for claims, description, or drawings? or anything in the application?

I am sure the inventor DIDN'T mention any features in his claims and descriptions, he DID have a drawing that similar to my drawing, can this be interpreted as inherently

anyone has an rejection example not expressly but inherently for my study.

my invention also has some feature the examiner didn't find, he take it as a protocol, could I use this as something unanticipated both the prior art and the examiner? or when I mentioned it to him, he still can use the prior art to reject my application?

how do you interpret the broadest explanation? any input is highly appreciated?

Answer 1

I recommend consulting with a patent practitioner who will be able to determine the most efficient way to respond to the Office Action.

If you must go it alone, the usual thing to do is identify which part(s) of your independent claim you believe a person of ordinary skill in the art would not necessarily be led to by reading the other disclosure, and argue the novelty of the claim based on those parts. Don't get too hung up on the similarity of the drawing, especially if the drawing in question does not show all of your claimed features (though each claimed feature should ideally be present in at least one drawing on your end of things).

If you can't do the above, it means your independent claim is too broad and you may have to narrow to get something allowed. For example, check for features present in your dependent claims that could be moved to the independent claim. Alternatively, it may sometimes be possible to rephrase a limitation in a way that is supported by the specification and clears the prior art.

Above all, don't panic. It is unfortunately fairly common for examiners to reject without a solid rationale by simply stating cursorily that it is within BRI or inherent or what not. Calling them out on this is usually not as efficient as explaining why your claim is patentable however. (The best strategy depends somewhat on whether you want your application to languish a long time versus potentially having stated on the record why it is patentable which statements could in theory be used against you later if you are not careful about how you phrase things).