Overcoming §103 Rejections for Biotech and Chemical Patents: Recent Decisions and USPTO Guidance

Recording of a 90-minute CLE webinar with Q&A

Conducted on Thursday, November 16, 2017

Recorded event now available

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Program Materials

This CLE webinar will provide guidance to patent counsel for overcoming §103 rejections for biotech and chemical patents. The panel will review recent judicial and PTAB case law and offer insights to address §103 rejections.


Obviousness can be a major hurdle for patent applicants in securing a patent on inventions. An obviousness determination can be complex, and examiners regularly reject patent claims as obvious under §103 in view of a combination of prior art.

For clients who receive a §103 rejection, counsel’s response should be part of a well thought out strategy that anticipates the possibility of later court and PTO challenges. For example, counsel should craft the response to minimize or eliminate prosecution history estoppel.

Further, in light of the demands of AIA post-grant proceedings, such as post-grant reviews and inter partes reviews, counsel should carefully consider submitting evidence, including comparative data, scientific arguments, and supporting declarations, in the reply to the rejection.

Listen as our authoritative panel of patent attorneys examines how the courts have treated §103 rejections and the USPTO’s guidance on §103 rejections. Based on decades of experience, the panel will offer their own war stories on overcoming §103 rejections. The panel will also discuss the distinct challenges for biotech and chemical inventions and best practices for patent counsel to address §103 rejections in biotech and chemical patent applications.



  1. Current guidance on §103 patent claim rejections
    1. Lessons from recent court decisions
    2. USPTO guidance
  2. Distinct challenges for biotech and chemical inventions
  3. Overcoming §103 rejections in biotech and chemical patent applications


The panel will review these and other key issues:

  • What evidentiary support should counsel provide to bolster its assertion of validity/patentability?
  • What tactics should patent counsel implement to overcome §103 rejections for biotech and chemical patents?
  • How can patent counsel guide applicants during patent application drafting to reduce the likelihood of rejection?


Irving, Thomas
Thomas L. Irving

Finnegan Henderson Farabow Garrett & Dunner

Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution,...  |  Read More

Baur, Amelia
Amelia Feulner Baur, Ph.D

Founding Partner
McNeill Baur

Dr. Baur’s practice covers a broad spectrum of intellectual property issues, including patent preparation and...  |  Read More

Amanda K. Murphy, Ph.D.
Amanda K. Murphy, Ph.D.

Finnegan Henderson Farabow Garrett & Dunner

Dr. Murphy focuses her practice on client counseling and patent prosecution for a range of clients. She prepares new...  |  Read More

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