103 Type Rejection: How to avoid it on your patent application?

Avoiding 103 type rejection PQAI

PQAI helps you identify the combinational prior-art that could be cited as the basis of an 103 type rejection on your patent application.

Looking forward to patenting your invention, the predicament of getting a rejection lingers around. Well, many a time it may be possible to overcome the rejection but it unnecessarily delays the allowance. Do you know what’s the most common reason for rejection? – It’s § 103 or obviousness.

103 type rejection accounts for 46.5% of all patent rejections

Note: Stats are based on the rejections (Final + Non-Final) given by the Patent Examiners, for the US applications from January, 2017 to September, 2020.

Stats show that 46.95% of patent rejections are because of existing combinational prior art (§103 Type). Read on if you don’t want the examiner to reject your patent application saying – ”your invention is obvious in light of so and so references”.

§ 103 Type Rejection | Combinational Prior Art

You receive a 103 type rejection when the examiner finds more than one document that jointly represents your invention as an obvious improvement.

Let’s say the idea is – “A drone for fighting forest fires that uses canisters filled with dry ice as fire extinguishing material.

Now if there exists two prior art documents: i) One that describes the use of aerial vehicles to fight forest fires. ii) And another that describes the use of powdered carbon-di-oxide (dry-ice) to extinguish the fire. Our idea shall be deemed obvious.

Combinational prior art to avoid 103 type rejection

Let’s run the example through PQAI (an open-source search engine that has the capability to identify the combinational prior art) and see what happens:

103 type rejection - Combinational prior art search using PQAI

So, we ran the idea query through PQAI and as a first combination of results, we got this:

Avoid 103 type rejection by conducting combinational prior art search using PQAI

Result snapshot from PQAI

One prior art is talking about fire-fighting drones and second is describing the usage of dry-ice in fighting fires.

What causes § 103 type rejection?

According to USPTO, your idea should stand these tests-

  • Only one reference doesn’t need to disclose your invention holistically. An examiner can use a combination of references to relate to your idea.
  • Rather than considering the differences between the idea and the prior arts, the claimed invention as a whole shouldn’t be obvious over the referred prior art.
  • Your idea as a whole shouldn’t look obvious to a person having ordinary skills in the art (PHOSITA) over existing references during the time of invention.

In our example, the drone is a combination of 2 references that together make the invention possible. The example can’t stand against these guidelines by USPTO. So, our drone is liable to get a rejection under section 103.

You might like to check the video here that shows why our fire-fighting drone with dry ice would fail the test of section 103.

How to rule out § 103 type rejection?

It might not be a bad idea to run your idea through PQAI once to look for the combinational prior art. With PQAI, we have dreamt of creating the world’s first prior art search engine that can identify the combinational prior art. We have also taken the first step to realize this dream. We have developed the first version of PQAI and continuously training our AI engine to perform better. The dream that we have seen cannot come true without the support of people from across the globe especially inventors, patent professionals, NLP practitioners, patent offices etc. In the next section of the article we are presenting a few cases where PQAI spotted the prior art cited by the patent examiner to give a 103 type rejection.

PQAI | Combinational Prior Art Validation Tests

Application NumberPublication NumberPriority DateAssigneeRejection DateRejection TypePublication No. Prior ArtPQAI Input
16246472US10731375B27/6/16NABORS DRILLING TECH USA INC23/4/20103US9027287B2Abstract
15866107US10696381B29/1/18THE BOEING COMPANY,CHICAGO,IL,US15/4/20103US5908174AClaim 1
16451553US10754607B226/9/18QUALCOMM INCORPORATED,SAN DIEGO,CA,US16/4/20103US6396329B1Abstract
15712616US10762997B212/10/16KOREA ATOMIC ENERGY RESEARCH INSTITUTE,DAEJEON,KR22/4/20103US20140205052A1Claim 1
14594517US10777098B112/1/15RAYLYNN PRODUCTS LLC,GROVE CITY,OH,US22/4/20103US5121745AAbstract
16123902US10778561B28/9/17BROCADE COMMUNICATIONS SYSTEMS LLC,SAN JOSE,CA,US23/4/20103US20130266307A1Abstract

For each of the listed 6 cases let’s see how PQAI spotted one of the prior arts used by the examiner to reject the patent application.

Case#1: US10731375 – “Side saddle slingshot drilling rig”

We picked up the abstract of the subject patent application – US10731375 ran it through PQAI.

Avoid 103 type rejection by conducting combinational prior art search using PQAI

Snapshot from PQAI

PQAI spotted a US patent titled “Fast transportable drilling rig system” – US9027287B2 as one of the prior art in the resultant 10 combinations.

Avoid 103 type rejection by conducting combinational prior art search using PQAI

Result snapshot from PQAI

Case#2: US10696381B2 –Hydraulic systems for shrinking landing gear

For this application, we picked up the claim and ran it through PQAI. 

#sidenote: When looking for prior art using PQAI for a particular patent, it’s best advised to put the invention query as (along with the priority date filter): 

  1. Abstract 
  2. Independent claims one at a time 
  3. Summary 
  4. Embodiments from specifications
Avoid 103 type rejection by conducting combinational prior art search using PQAI

Snapshot from PQAI

PQAI spotted US5908174A – “Automatic shrink shock strut for an aircraft landing gear” as one of the results in 10 combinations it presented. It’s also one of the prior arts listed by the examiner to reject the patent application.

Avoid 103 type rejection by conducting combinational prior art search using PQAI

Result snapshot from PQAI

Case#3: US10754607B2 – “Receiver and decoder for extreme low power, unterminated, multi-drop serdes”

We picked up the abstract from the patent application US10754607B2 and ran it through PQAI under the combinations (103) option.

Avoid 103 type rejection by conducting combinational prior art search using PQAI

Snapshot from PQAI

PQAI spotted one of the prior arts – US6396329B1; it’s one of the prior arts cited by the examiner to reject the patent application US10754607B2.

Case#4: US10762997B2 – “Decontamination method reducing radioactive waste”

We picked up the claim 1 of the subject patent application US10762997B2 and ran it through PQAI as shown below:

Avoid 103 type rejection by conducting combinational prior art search using PQAI

Snapshot from PQAI

PQAI spotted one of the prior arts, the examiner cited to give 103 type rejection – US20140205052A1.

Avoid 103 type rejection by conducting combinational prior art search using PQAI

Result snapshot from PQAI

Case#5  US10777098B1 – “CPR training device”

We picked up the abstract of the subject patent application – US10777098B1 and ran it through PQAI to look for the combinational prior art.

Avoid 103 type rejection by conducting combinational prior art search using PQAI

Snapshot from PQAI

PQAI spotted US5121745A – “Self-inflatable rescue mask” as one of prior arts in one of the combinationational results. It’s also one of the prior arts cited by the examiner to reject the patent application US10777098B1.

Avoid 103 type rejection by conducting combinational prior art search using PQAI

Result snapshot from PQAI

Case#6: US10778561B2 – “Diagnostic port for inter-switch and node link testing in electrical, optical and remote loopback modes” 

We picked up the abstract of US10778561B2 and ran it through PQAI with a date filter. We looked for results published before 2017-09-08.

Avoid 103 type rejection by conducting combinational prior art search using PQAI

Snapshot from PQAI

PQAI spotted US201303266307A1 as a prior art in two combinations. US201303266307A1 is one of the prior arts cited by the examiner to reject the subject patent application. 

Avoid 103 type rejection by conducting combinational prior art search using PQAI

Result snapshot from PQAI
Avoid 103 type rejection by conducting combinational prior art search using PQAI

Result snapshot from PQAI

Use PQAI for Combinational Prior Art Search (103 type)

§103 type – combinational prior art  is the most common type of rejection at the patent office. At PQAI, we have taken a shot at creating  a prior art search engine that’s capable of spotting combinational prior art. We are continuously testing and improving our algorithm to perform an even better search. We propose that you run your idea at least once through PQAI to look for combinational prior art before applying for a patent. All that’s needed is a few minutes of your time, who knows – PQAI may become your saviour from failing at the patent office.

Happy patenting! Try PQAI now!

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