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15. On what basis can the PTO reject an application?

The PTO Examiner will search through issued patents (prior art), and attempt to find one or more primary patents which contain as many of the features of the invention as possible. The Examiner may search either domestic or foreign patents, or on rare occasions other documents such as a technical journals. If the Examiner finds a single issued patent that contains all of the features of the invention, he/she will reject the application on the grounds that it lacks novelty. That is, the invention already exist and is therefore not patentable. If the Examiner cannot find a single patent which contains all the features of the invention, he/she will then look for a secondary patent or patents which contain the missing features. If the Examiner can combine a primary patent and one or more secondary patents such that in total they have all the features of the invention, he/she will reject the application on the grounds that it is obvious. In other words, it would have been obvious to a skilled person to combine the features of the primary and secondary prior art and thereby result in the invention. An obviousness rejection is oftentimes subjective and is therefore usually more difficult to overcome than a novelty rejection. While all this may sound gloomy indeed, there do exist useful techniques and arguments to overcome many Examiner rejections.




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