If a claimed invention is not considered patentable, or not considered patentable as claimed, the claim(s), or those considered un-patentable, will be rejected. When rejecting claims for want of novelty or for obviousness, the examiner must cite the most relevant references.
When a reference is complex, or shows or describes inventions other than that claimed by the applicant, the particular part(s) relied upon by the examiner must be designated as precisely as practicable. The pertinence of each reference, if not apparent, must be clearly explained, and each rejected claim specified.
When rejecting claims the examiner may rely upon an applicant’s admissions, or admissions from the patent owner in a reexamination proceeding, as to any matter affecting patentability. The examiner may also rely upon facts within his/her knowledge when rejecting a claim.
Only subject matter developed by another person which qualifies as prior art under 35 USC§ 102(e), (f) or (g) may be used as prior art against a claimed invention (35 USC§ 103). The only exception is if the entire rights to the subject matter and the claimed invention were commonly owned by the same person or subject to an assignment obligation to the same person at the time the claimed invention was made.