Rejection of Invention or Rejection of Patent Claims?



When the examiner examines a patent application the examiner may issue an office action in which the examiner rejects all or some of the claims of the respective patent application. The question is, what is the examiner rejecting? Is the examiner rejecting the invention?


The answer is clearly NO if the examiner allows some of the claims. If the examiner allows some of the claims, the examiner clearly indicates that at least some aspects of the invention are patentable. So, if the examiner rejects some of the claims, the examiner means that those claims, i.e., that particular combination of invention aspects recited in those claims, is not patentable over the prior art (e.g., prior patents or patent applications) found by the examiner in his/her prior art search. Likely that is because those rejected claims are too broad. So, even those rejected claims may be patentable possibly via an amendment (or argument) to distinguish over the cited priority.

If the examiner rejects all the claims, even after a series of amendments and/or patentability arguments, then YES, the examiner is rejecting the invention.

Imagine you live in the Middle Ages. You are a warrior, and you just conquered a city with your army. Now you want to claim ownership of the entire country or at least a buffer zone of several other smaller cities surrounding the conquered city. You may be fought on that claim by the local population, to force you just stay within the limits of the city you just conquered.



The examiner thinks similarly, as the local population in the above analogy. Even if the examiner believes you have a patentable invention, the examiner wants to make sure you are not claiming more than you're entitled to.

PATENT, Trademark and IP Law Blog

  • CIONCA IP - MC10/7/2022 9:33:56 PM

    Rejection of Invention or Rejection of Patent Claims?

Marin Cionca | Founder of CIONCA IP

Marin Cionca, Esq.

Registered Patent Attorney

USPTO Reg. No. 63899

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About CIONCA® IP Law firm: We are an Irvine, Orange County, California based boutique intellectual property law firm with a focus on patent and trademark application, prosecution, opinion, licensing and IP enforcement services, including IP litigation, offering its IP services, other than IP litigation, primarily at flat fee rates. We serve local OC (Orange County) clients, as well as clients from the Los Angeles, San Diego and Riverside Counties and clients throughout the state of California, the United States and also international clients, such as EU clients.

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