For each new non-provisional patent application filed with the USPTO, the assigned examiner performs a search for “prior art” publications (typically patents and patent applications published prior to the effective filing date of the application under examination) that reasonably relate to the subject matter claimed in the application.
Based on that prior art search, unless they believe all the claims to be allowable (they rarely do at this point in the process), the examiner prepares and sends a first substantive communication, commonly called an “Office Action”. In that first Office Action, the examiner explains their initial viewpoint on the patentability of the claims. Unfortunately, that viewpoint is typically negative, poorly explained, and weakly supported in both fact and law.
For the vast majority of all new non-provisional patent applications, the first substantive communication from the USPTO is an Office Action that “rejects” most or all the application’s claims – sometimes for silly and/or disingenuous reasons.
However, such rejections are not final, and in fact typically represent merely the first volley in the USPTO’s implicit and unnecessarily discouraging request to help them better understand the claimed concepts. In most cases, the examiner is essentially inviting the applicant to explain how each claimed concept differs from what is described (not necessarily claimed) in the cited prior art publications.
So at a general level, receiving such an Office Action should be no cause for alarm. In fact, it is quite normal.
Sometimes the examiner does a reasonably good job and actually finds prior art that unquestionably describes the claimed concept. Nevertheless, even those situations often can be rather easily overcome, particularly if the applicant has performed a solid patentability search and written the application to include claims of varying scope.
Regardless of the quality of an examiner’s justifications for rejecting the claims, your patent attorney usually can eventually overcome those rejections (potentially with input from the innovators (if necessary) via written give-and-take or “negotiations” with the examiner. Via those negotiations, which nearly always include several volleys of a written “Response” (or “Reply”) followed by a further Office Action, your patent attorney will attempt to persuade the examiner to reconsider their evidence and/or reasoning. In any given Response, your patent attorney might edit (“amend”) the Description (e.g., to correct typos), drawings (e.g., to align with the Description), and/or claims (e.g., to avoid prior art that is just too close to the claimed concepts), introduce evidence for the examiner to consider, and/or present legal and/or technical arguments challenging the examiner’s position.
Sometimes, the negotiations can be expedited via a telephonic “interview” with the examiner. During the interview, the patent attorney and examiner will discuss the claims more informally, with the examiner sometimes offering suggestions, and even claim amendments, that if implemented would help the examiner feel more comfortable with allowing the claims. On occasion, the examiner will be willing to put the claims in condition for allowance by directly editing the claims (via “Examiner’s Amendment”) so that a formal Response to the Office Action need not be submitted.