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706.01   Contrasted With Objections

MPEP SECTION SUMMARY

This section covers the differences between rejections and objections. The practical difference between a rejection and an objection is that a rejection, involving the merits of the claim, is subject to review by the Patent Trial and Appeal Board, while an objection, if persisted, may be reviewed only by way of petition to the Director of the USPTO.

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706.01
   

The refusal to grant claims because the subject matter as claimed is considered unpatentable is called a “rejection.”

If the form of the claim (as distinguished from its substance) is improper, an “objection” is made.

  • An example of a matter of form as to which objection is made is dependency of a claim on a rejected claim, if the dependent claim is otherwise allowable.

Objections --

If the form of the claim, specification, or drawing is improper, an objection is made.

An applicant may contest an objection by:

  • asking the examiner to reconsider it.
  • filing a petition to the Commissioner.

Rejections --

If the subject matter is said to be unpatentable it is rejected to.

Rejections are usually made due to issues with one of the following:

  • unpatentable subject matter or lack of utility (35 U.S.C. 101)
  • issues with novelty (35 U.S.C. 102)
  • issues with obviousness (35 U.S.C. 103)
  • lack of subject matter
  • issues with the written description, enablement and best mode (35 U.S.C. 112)

An applicant may contest a rejection by:

  • asking the examiner to reconsider it
  • appealing to the Board of Patent Appeals and Interferences

 

» 706.03 Rejections Not Based on Prior Art