Responding to Patent Office Actions: Sect. 101 and 112 Rejections

Assessing Response Alternatives to Rejections on Non-Statutory Subject Matter and on Technicalities

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

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Conducted on Wednesday, July 16, 2014

Recorded event now available

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Course Materials

This CLE course will provide guidance for patent counsel to respond to Patent Office Actions, understand key considerations, and assess the alternative responses to §§101 and 112 rejections. The panel will offer strategies to overcome pitfalls that arise in the application.


Patent counsel can avoid some problems causing a rejection by the patent examiner by drafting the application in anticipation of common rejections. Rejections under §101, particularly as related to software, often come down to the wording. Many §101 rejections can be overcome by demonstrating that the invention is operable.

However, before replying to a rejection, counsel should examine the rejection and determine first whether the rejection reflects the reality of the patent subject matter described in the application. How did the application fail to be eligible subject matter?

There are several common problems that result in rejections on technicalities under §112, ranging from failing to add a proper limitation on a dependent claim to issues of lack of enablement. Counsel should examine the logic of the rejection. Was the rigorous standard for an enablement rejection met?

Counsel must plan and carefully implement well-thought-out strategies for overcoming the rejections.

Listen as our authoritative panel discusses what patent counsel must consider when presented with a Patent Office Action and ways to overcome §§101 and 112 rejections or objections. The panel will review the areas where many problems occur and offer strategies for surmounting the problems.



  1. Strategic considerations for counsel before responding to an office action
  2. Overcoming patent office rejections
  3. Key problem areas to anticipate and prepare to respond and follow up
  4. Strategies for overcoming issues outlined in Patent Office Actions


The panel will address these and other key questions:

  • What are the key considerations for patent counsel when responding to a §101 or §112 rejection?
  • What are the areas that have proven to be red flags for the PTO?
  • What other strategies should counsel implement 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

Dr. Lisa M. Matovcik
Dr. Lisa M. Matovcik
Senior Patent Attorney, Critical Care
Novartis Pharmaceuticals

Dr. Matovcik leads the prosecution of large patent portfolios of biological compounds, develops and implements global...  |  Read More

Lauren L. Stevens, Esq.
Lauren L. Stevens, Esq.
Global Patent Group

Ms. Stevens practices strategic client counseling and patent procurement in the pharmaceutical area, including the...  |  Read More

Thayer, Linda
Linda J. Thayer

Finnegan Henderson Farabow Garrett & Dunner

Ms. Thayer focuses her practice on patent litigation and administrative trial procedures to request review of the...  |  Read More

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