The most common rejections in a patent application include so called a novelty rejection under 35 U.S.C. § 102, an obviousness rejection under 35 U.S.C. § 103, and indefiniteness rejection under 35 U.S.C. § 112. You may say that if a patent application pass two tests (novelty and obviousness tests), your patent application would be most likely granted to a patent.

Novelty Rejection under Section 102

One of the legal requirements under U.S. law is that an invention be new or novel. An application for a U.S. patent for an invention filed with the United States Patent Office may be rejected under 35 U.S.C. § 102 (“102 rejection”) if a single prior art reference teaches each and every element of a patent application’s claim. Generally speaking, the term prior art means information available to the public that predates the filing date of a patent application.  Prior art may include patents and other printed publications available to the public anywhere in the world before the filing date of a patent application.

Obviousness Rejection under Section 103

A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made. A rejection based on 35 USC §103 is used when the claimed invention is not identically disclosed or described so the reference teachings must somehow be modified in order to meet the claims. The differences between the claimed invention and the reference teachings must have been obvious at the time the invention was made and to a person having ordinary skill in the art.

Indefiniteness Rejection under Section 112

Patent claims must follow certain rules in terms of format and language. For this reason, claims will often read like a foreign language because the grammar and structure required by the patent law seem a bit off from an ordinary written structure. For example, a patent claim must be addressed in a phrasal expression.  A Section 112 rejection in a patent Office Action means that the examiner considers certain claim language indefinite. The good news is that, in most cases, indefiniteness under Section 112 may be resolved by a fairly simple response correcting whatever objections raised by the examiner.