There are at least three strategies for trying to overcome a rejection for lack of novelty. The first is to point out a missing element or limitation in the reference. The second strategy is to amend the claim to include an element or limitation in the reference. The third strategy is to try to swear behind the reference if the date of the reference is less than one year before the filing date of the application.
A key point to keep in mind when amending applications is the doctrine of prosecution history estoppel. Basically, any statement that is made during the prosecution of a patent can be used to limit the scope of the patent claims. This includes statements that emphasize differences between the patent claims and the prior art. This also includes statements that narrow the scope of the patent claims. Consequently, the strategy of swearing behind the reference is the most preferable method of overcoming a novelty rejection.
Overcoming Lack of Novelty Rejection
Thomas Joseph is a patent attorney in Pittsburgh, Pa. He maintains a solo practice in all areas of intellectual-property law. He has been practicing since 2001. Before starting his solo practice, Joseph was the General Counsel of Grant Street Group, a financial software firm. At Grant Street Group, he managed the company’s patent litigation against its primary competitors in the online-auction markets for tax certificates, foreclosures, tax deeds and municipal bonds. Joseph received a Bachelor of Science in Metallurgical Engineering and Materials Science from Carnegie Mellon University, a Master of Science in Materials Science and Engineering from the University of Florida and a Juris Doctorate from George Washington University.
You can contact him at www.joseph-iplaw.com.
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