REVOCATION
(1).3.Parliamentary law. Failure of adoption or ratification. See LOST(3).4.Patents.
A patent examiner’s finding in an office action that a claim in an application is unpatentable. Cf.
OBJECTION(4); RESTRICTION(4). [Cases: Patents 108. C.J.S. Patents §§ 144, 148–151.] —
reject,vb. aggregation rejection.Rejection of a patent claim on the ground that it is a list of unrelated
elements that, taken together, do not assert a claim. [Cases: Patents 25. C.J.S. Patents § 86.]
alternativeness rejection.Rejection of a patent claim on the ground that it seeks a broad
monopoly on the invention as disclosed and on other unspecified variations. • For example, a
claim using a phrase such as “and similar materials” would probably be too broad to be allowed.
[Cases: Patents 124. C.J.S. Patents § 210.]
duplicate-claiming rejection.The nonart rejection of a patent claim because it is not
substantially different from another claim.
exhausted-combination rejection.See old-combination rejection.
failure-to-disclose-best-mode rejection.Rejection of a patent application on the ground that
the inventor has not disclosed the best way to use the invention. • To warrant rejection, the
examiner must find deliberate concealment or a description so poorly drafted as to amount to
concealment. [Cases: Patents 98. C.J.S. Patents §§ 137–139.]
final rejection.A patent examiner’s finding, in a second or subsequent office action, that a
claim in an application is unpatentable on the merits. • A final rejection is made in the final office
action. Despite the misleading name, a final rejection need not end the prosecution. The rejection
can be appealed, or the application can be reexamined or continued in another application. A
rejection may also be appealed to the Board of Patent Appeals and Interferences. A decision of that
Board may be reviewed by the U.S. District Court for the District of Columbia or appealed to the
U.S. Court of Appeals for the Federal Circuit. 35 USCA §§ 141–145. [Cases: Patents 108. C.J.S.
Patents §§ 144, 148–151.]
formal rejection.Rejection of a patent claim because of an error in format rather than
substance. • A formal rejection is actually an objection rather than a rejection, since it requires no
substantive change in the claim. — Also termed nonart rejection. [Cases: Patents 104. C.J.S.
Patents §§ 145–147, 149–151, 173–175.]
functional rejection.Rejection of a patent claim on the grounds that it broadly claims a
function but does not disclose enough structure to account for achieving that function. See
FUNCTIONAL LIMITATION. [Cases: Patents 101(8).]
inaccuracy rejection.Rejection of a patent claim on the ground that it is not consistent with
the description.
incompleteness rejection.Rejection of a patent application on the ground that an element of
the device or a step in the process has been left out.
interference-estoppel rejection.Rejection of a patent claim on the ground that the applicant
failed to bring the claim into a previous interference contest in which its priority could have been
determined. [Cases: Patents 112.4.]
judicially created double-patenting rejection.Rejection of a patent application on the ground
that the invention is an obvious variation of another patented invention by the same inventor. —
Also termed obviousness-type double-patenting rejection. [Cases: Patents 120.]
lack-of-antecedent-basis rejection.Rejection of a patent application on the ground that a
reference either in the specification or in the claim is missing.
lack-of-enablement rejection.See nonenablement rejection.
lack-of-utility rejection.Rejection of a patent claim on the ground that the invention is
inoperative, frivolous, fraudulent, or against the public interest. • The classic examples are
perpetual-motion machines (inoperative), cures for the common cold (frivolous because believed
impossible, and also probably fraudulent), and gambling devices (formerly seen as against the
public interest). [Cases: Patents 46. C.J.S. Patents § 59.]
new-matter rejection.Rejection of a patent claim on the ground that an amendment contains
new matter. [Cases: Patents 109. C.J.S. Patents §§ 152–155.]
nonart rejection.See formal rejection.
nonenablement rejection.Rejection of a patent claim on the ground that its specification does
not teach enough to enable a person skilled in the art to make and use the invention. — Also
termed lack-of-enablement rejection. [Cases: Patents 99. C.J.S. Patents § 139.]
obviousness-type double-patenting rejection.See judicially created double-patenting
rejection.
old-combination rejection.Rejection of a patent claim on the ground that, despite the fact that
one or more elements perform in a different way, all the elements perform the same function as a
previously patented invention. • The improved element may be patentable, but the combination
may not be. — Also termed exhausted-combination rejection. [Cases: Patents 26(1.1).]
prolixity rejection.Rejection of a patent application on the ground that the language is so
wordy and tedious that it tends more to hide than to disclose the invention.
rejection on issues of interference.Rejection of a patent claim on the ground that the applicant
has lost a final judgment of priority regarding the claim in an interference contest. [Cases: Patents
112.4.]
same-invention double-patenting rejection.See statutory double-patenting rejection.
Section 101 rejection.Rejection of a patent application on the ground that it is based on
nonstatutory subject matter. 35 USCA § 101.
Section 102 rejection.Rejection of a patent application for lack of novelty. 35 USCA § 102.
[Cases: Patents 37. C.J.S. Patents §§ 29–30.]
Section 103 rejection.Rejection of a patent application for obviousness. 35 USCA § 103.
[Cases: Patents 16.1. C.J.S. Patents § 64.]
Section 112 rejection.See vague-and-indefinite rejection.
shotgun rejection.Slang. Denial of all or almost all claims in a patent application by the U.S.
Patent and Trademark Office, esp. in the first office action.
statutory double-patenting rejection.Rejection of a patent application on the ground that the
invention is the same subject matter as an already-patented invention by the same inventor. • This
rejection is based on 35 USCA § 101. — Also termed same-invention double-patenting rejection.
[Cases: Patents 120.]
undue-breadth rejection.Rejection of a patent claim on the ground that it seeks a patent
monopoly on more than the invention. • For instance, a functional claim is too broad if it purports
to include every other possible way of accomplishing a function. A claim on a chemical is more
likely to be rejected for undue breadth than a claim on a machine, because future discoveries are
less predictable. [Cases: Patents 124. C.J.S. Patents § 210.]
undue-multiplicity-of-claims rejection.Rejection of a patent application on the ground that it
makes an unreasonable number of claims. See AGGREGATION OF CLAIMS.
vague-and-indefinite rejection.Rejection of a patent claim on the ground that a person of
ordinary skill in the art could not clearly understand it. • For example, terms used in more than one
sense could make the meaning unclear. — Also termed Section 112 rejection. [Cases: Patents
101(6).] [Blacks Law 8th]