Patent prosecution professionals frequently encounter a pattern in Office Actions where the examiner rejects a claim feature under Section 112 (written description, enablement, or clarity) while also rejecting the overall claim under Section 102 or 103 where the feature rejected under Section 112 is the one most obviously lacking in the references. This is often not a coincidence. Instead, it can reflect a strategic approach by the examiner: when a claim feature is not sufficiently found in the prior art, the examiner may find cover by declaring the feature unclear or unsupported, thereby enabling an overly broad interpretation that facilitates an anticipation or obviousness rejection.
From an examiner’s viewpoint, rejecting a claim efficiently is the goal. If a key limitation is lacking somehow in the prior art, then challenging the clarity or support for that limitation under Section 112 can justify interpreting the claim in a broader (and often unintended) way. This broader interpretation can then be used to map the claim onto prior art references that otherwise lack the missing feature. Specifically, an examiner may assert that a claim term is indefinite under Section 112(b) or lacks sufficient written description under Section 112(a). With that ambiguity established, the examiner can then interpret the term broadly enough to encompass the cited art, thereby supporting a rejection under Section 102 or 103.
Patent practitioners should be alert to signs that an examiner is leveraging Section 112 rejections to support an potentially improper rejections under Section 102 or 103:
The key limitation missing from the prior art is the same limitation flagged under Section 112
The examiner provides little or no substantive explanation for how the prior art actually teaches the disputed limitation
The rejection under Section 102/103 appears to rely on a strained or unnatural reading of the claim language
The examiner dismisses distinctions over the prior art by citing the alleged indefiniteness of the claim term.
A recent PTAB case is illustrative. Appeal 2023-003350, Application 16/737,540. The invention relates to soil treatment. As explained by the PTAB:
The invention relates to the application of lactobionic acid or salts thereof to soil, thereby improving the soil by aggregating the soil particles into clumps and by creating a food source for soil microbes. Aggregating the soil particles improves moisture retention. Providing a food source for the soil microbes increases the soil organic matter and soil organic carbon content.
Claim 1 on appeal is reproduced below.
1. A method of extending a period of increased soil nitrogen levels in a soil, the method comprising:
applying a soil enhancement agent to the soil, wherein the soil enhancement agent comprises one or both of (i) lactobionic acid and (ii) at least one salt of lactobionic acid, and wherein the soil enhancement agent comprises less than 1 dry wt.% proteins; and
applying a nitrogen-containing fertilizer to the soil, wherein the soil treated with both the soil enhancement agent and the nitrogen-containing fertilizer has a higher level of soil nitrogen for at least a portion of a growing cycle of a plant-based crop planted in the soil than the same soil treated without the soil enhancement agent during the growing cycle of the plant-based crop.
A key issue on appeal was related to the limitation of a “plant-based crop.” The examiner had rejected the claim based on prior art that disclosed soil treatments for mushrooms. In response, the applicant amended the claims to be specific to a plant-based crop. And since mushrooms are not plants, the applicant argued that the cited art was deficient.
The examiner then attacked the amendment under Section 112 as being unsupported (and new matter), while at the same time rejecting the claim based on teachings for fungi under a broad interpretation of plants and crops as including things like wild mushrooms. Apparently this examiner never played 20 questions.
In this case, the applicant’s specification disclosed numerous example plants, but did not specifically use the term “plant-based crop” but did use the terms separately. Further, every example crop provided in the specification was one that was a plant, not a fungus. In this way, the applicant argued that a sufficient number of species were disclosed to support the claim. The PTAB agreed:
As Appellant points out, the written description requirement may be satisfied by a description of a representative number of species. Appeal Br. 6, citing Regents of the Univ. of California v. Eli Lilly and Co., 119 F.3d 1559, 1658 (Fed. Cir. 1997). Here, the specification recites 8 broad classes of crops (fruits, squashes, grains, etc.) and 21 species of crops (tomatoes, strawberries, pumpkins, etc.), all of which a person of skill in the art would identify as plant-based. See Spec. ¶ 43. We agree with Appellant that this constitutes an adequate disclosure to satisfy the written description requirement of Section 112.
From here, it was then a short step to reverse the rejection under Section 103 as the examiner had virtually no support for the assertion that mushrooms were plants.
As this case illustrates, successfully addressing rejections may require a coordinated response that tackles both the Section 112 and the Section 102/103 rejections in tandem. Consider the following tips that might come in handy in your prosecution endeavors:
Force the Examiner to Commit to an Interpretation – If the examiner applies an unreasonably broad interpretation, explicitly request that the examiner clarify how the cited prior art teaches the disputed feature in light of the correct interpretation
Leverage the Specification – Point to explicit support in the specification that demonstrates the meaning and enablement of the disputed term. Make sure you’re interpretation is consistent with the entire specification
Push Back on the Examiner’s Logical Consistency – If the examiner argues that a term is both unclear and somehow taught by the prior art, find ways to use this contradiction to cut down the rejection’s logic
Consider an Interview – sometimes there is a simple solution that can be found through a collaborative discussion
This interplay between Section 112 and Section 102/103 rejections is a recurring challenge in patent prosecution. By recognizing the pattern and responding with coordinated amendments and arguments, practitioners can better address the situation where examiners use Section 112 issues as a backdoor to an overly broad or otherwise improper interpretation to enable a prior art rejection. A proactive approach—reinforcing clarity, compelling the examiner to adopt a consistent claim interpretation, and leveraging specification support—can lead to success in prosecution.