Statutory and Regulatory Compliance: Patentability, Novelty, Obviousness, and Disclosure
Patentability pillars
Section 101 requires eligible subject matter and utility. Courts apply a two-step eligibility analysis: is the claim directed to an abstract idea, law of nature, or natural phenomenon, and if so, does it include an inventive concept beyond the ineligible concept? Section 102 asks whether each claim element is disclosed in a single reference. Section 103 asks whether the differences would have been obvious to a person of ordinary skill, considering scope and content of the prior art, differences, and level of skill, with objective evidence (secondary considerations) such as commercial success, long-felt need, and unexpected results.
Disclosure duties
Section 112(a) requires enablement (how to make and use), written description (possession), and best mode. Section 112(b) requires definiteness. Inequitable conduct arises from material misrepresentation with intent to deceive; the duty of disclosure under 37 C.F.R. 1.56 covers inventors, attorneys, and others substantively involved.
Traps
Obviousness questions often hide a teaching-away reference or a missing rationale; examiners must articulate reasoning (e.g., motivation to combine). For 101, beware of claims that recite a generic computer implementation of an abstract idea without an inventive concept. For 112, a claim term is not indefinite merely because it is relative; it is indefinite if it fails to inform those skilled in the art with reasonable certainty.
Rule of thumb
For any rejection, write the statutory hook (101/102/103/112), the element-by-element comparison, and the rationale. If you cannot state the rationale in one sentence, the rejection is likely vulnerable.