Overcoming Sect. 102 Rejections: Leveraging Recent Decisions and USPTO Guidance

*** This program has been cancelled ***

A live 90-minute CLE webinar with interactive Q&A

Thursday, August 17, 2017
1:00pm-2:30pm EDT, 10:00am-11:30am PDT

This CLE webinar will provide guidance for patent counsel for overcoming §102 rejections. The panel will review recent case law and USPTO guidance and offer strategies to address §102 rejections.


Novelty is one of the hurdles for patent applicants in securing a patent on inventions. Section 102 rejections are the second most-issued rejection basis at the USPTO regardless of technology. Applicants and their counsel may respond to rejections in several ways and should carefully consider which option will most likely result in overcoming the rejections and resulting in a patent of optimal enforceability.

In a §102 rejection, what the claim says and how it is construed matter. Counsel should base arguments on the language of the claim, keeping in mind how it is likely to be construed. Doing otherwise may prompt the examiner to consider a §112 rejection for failing to claim the subject matter the applicant regards as his invention and could also result in subsequent enforcement problems. If it is necessary to argue other language, amending the claim to incorporate that language may be prudent.

Among the avenues counsel can take to respond to a rejection are a Request for Continued Examination (RCE), an interview, and an appeal. The most popular response—RCEs—is not necessarily the most effective.

Applicants can anticipate more rejections going forward. Those who receive a §102 rejection and their counsel must plan and carefully implement well thought out strategies for overcoming the rejections and enhancing future enforcement.

Listen as our authoritative panel of patent attorneys discusses §102 rejections, how applicants respond to them, and how successful those responses are. The panel will examine how patent examiners, the Patent Trial and Appeals Board (PTAB), and the courts have treated §102 rejections and the USPTO’s guidance on §102 rejections. The panel will also discuss the challenges and will offer best practices for patent counsel on how to address and overcome §102 rejections in patent applications.


  1. Current guidance
    1. Lessons learned from recent court decisions
    2. USPTO guidance
  2. Strategies for overcoming §102 rejections
    1. Identifying and arguing deficiencies in examiner’s characterization
    2. Examiner interviews
    3. RCEs
    4. Addressing rationale behind rejection
    5. Amending claims
    6. Improved drafting to avoid rejections


The panel will review these and other key issues:

  • What, if any, evidentiary support should counsel provide to bolster its assertion of novelty?
  • What strategies can patent counsel implement to overcome §102 rejections?
  • How can patent counsel guide applicants, for example, during the drafting process, in reducing the likelihood of a §102 rejection?


Thomas L. Irving, Partner
Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C.

Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution, reissue and reexamination, patent interferences, and counseling, including prelitigation, Orange Book listings of patents covering FDA-approved drugs, and infringement and validity analysis in the chemical fields, as well as litigation. He has served as lead counsel in many patent interferences.

Anthony M. Gutowski, Partner
Finnegan Henderson Farabow Garrett & Dunner, Reston, Va.

Mr. Gutowski focuses on client counseling, patent procurement, and patent enforcement. He advises clients on patent matters relating to infringement, validity, due diligence, and licensing. He also focuses his practice on strategic patent portfolio growth, management, and utilization. He has prepared and prosecuted patent applications to patent issuance and has significant experience in securing patent protection outside the U.S. He has developed vast experience in complex USPTO proceedings such as interferences, appeals, reissues, and reexaminations. 

Michael V. Young Sr., Esq.
Finnegan Henderson Farabow Garrett & Dunner, Reston, Va.

Mr. Young practices patent law with an emphasis on patent portfolio management, client counseling, U.S. district court litigation, and post-grant proceedings. He also represents clients in the U.S. Court of Appeals for the Federal Circuit in cases stemming from court actions and post-grant proceedings. He has worked on inter partes review (IPR) and covered business method (CBM) post-grant review (PGR) proceedings. He develops offensive and defensive strategies for multiple, related proceedings; prepares and manages the preparation of written submissions; takes and defends technical expert depositions; and argues discovery and substantive issues.

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