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Walk through a real 103 obviousness rejection — from the examiner’s arguments to a verified, export-ready response.
UNITED STATES PATENT AND TRADEMARK OFFICE
Office Action Summary
Application No.: 16/789,012
Examiner: Sarah Chen
Art Unit: 2145
Mailed: January 15, 2026
Rejection of Claims 1-7
Claims 1-7 are rejected under 35 U.S.C. § 103 as being unpatentable over Jones et al. (US 10,123,456) in view of Williams (US 2021/0012345).
Regarding claim 1, Jones teaches a computer-implemented method comprising receiving patent documents in electronic form and processing data using a classification system (col. 3, ll. 5-18).
Jones does not expressly teach using a “trained machine learning model.” However, Williams teaches using machine learning for document classification ([0045]). It would have been obvious to one of ordinary skill to modify the system of Jones with the teaching of Williams to improve classification accuracy.
Response Deadline: April 15, 2026
A shortened statutory period for reply is set to expire THREE MONTHS from the mailing date. Extensions of time may be obtained under 37 CFR 1.136(a).
What PatentSolve does with this
Sample output from a real 103 obviousness rejection analysis. All citations automatically verified against source documents.
Catch §112(b) errors before the examiner does
A single antecedent basis error can trigger a new office action — months of delay and thousands in fees. PatentSolve catches it in seconds.
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7 rule-based checks — no language model, no probability, no judgment calls. Every flagged issue includes the exact text, context, and a suggested fix, with MPEP citations where applicable.
- Antecedent Basis — Flags missing “a/an” introductions before the examiner issues a §112(b) rejection
- Claim Dependencies — Flags claims referencing nonexistent claims, circular chains, and improper cross-type references
- Claim Numbering — Detects gaps, duplicates, and misordering that trigger corrective amendments
- Formal Requirements — Missing terminal periods, multiple sentences, capitalization issues that invite objections
- Transition Phrases — Catches inadvertent scope narrowing (“consisting of” vs. “comprising”) before it limits your claims
- Reference Numerals — Verifies every numeral in your claims matches the specification, catching typographical mismatches and inconsistent element naming
- Specification Consistency — Confirms claim terms appear in the specification and paragraph references are valid
Every unnecessary amendment becomes prosecution history — and potentially a claim construction argument against your client.
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Learn more in our proofreading guide24 claims analyzed (5 independent, 19 dependent)
Claim 12: “the authentication token” lacks antecedent basis
“...wherein the authentication token is validated by...”
Requires prior introduction with “a” or “an” in this claim or a parent claim. See MPEP 2173.05(e).
Fix: Add “an authentication token” in claim 1 or a parent claim, or change to match existing terminology
How it works
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Upload
Drop your office action PDF — non-final, final, or advisory. Scanned documents are automatically OCR’d. Every rejection, claim mapping, and cited reference is extracted.
Analyze
Each rejection is classified (101, 102, 103, 112, DP). Cited prior art is fetched and mapped element-by-element. Examiner prosecution history is pulled — allowance rate, interview data, patterns.
Draft
Rejection-specific arguments generated: motivation-to-combine for 103, Alice/Mayo for 101, spec support for 112. Citations verified against source documents. Amendments in 37 CFR 1.121 format.
Export
Download a complete Word document with proper markup — strikethrough deletions, underline additions, claim status identifiers. Ready for Patent Center after your review.
Every detail a patent attorney would demand
Not generic AI writing. Purpose-built prosecution tools with real patent law knowledge.
Citation Verification
Never file a response with a bad cite
Citations are checked against actual source documents before they reach you — prior art, MPEP sections, specification references, and case law. Unverifiable citations are flagged for your review.
Rejection-Specific Strategies
The right argument structure for every rejection type
Different rejection types require fundamentally different arguments — PatentSolve applies the correct framework for 101, 102, 103, 112, and double patenting automatically.
Claim Amendment Drafting
Proper 1.121 format without manual reformatting
Amendments generated in proper 37 CFR 1.121 format with strikethrough deletions, underline additions, and correct claim status identifiers.
Examiner Prosecution Playbook
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Data-driven examiner profiles with allowance rates, interview success patterns, and recommended strategies tailored to your specific examiner.
Do the math
A single office action response typically takes 3–5 billable hours. Here’s what that costs your practice.
Manual Response
$1,200
4 hours × $300/hr
with PatentSolve
PatentSolve + Review
$225
$75 + 30 min review
$975
saved per response
3.5 hrs
freed for billable work
$11,700
saved yearly (1/month)
Based on $300/hr billing rate and 4 hours average manual response time. Pro plan ($299/mo) drops per-response cost to ~$12.
Plus: The patent proofreader saves 30–60 minutes of manual checking per application — that’s $150–$300 in attorney time, on every filing.
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