What is the difference between admissions and mere arguments in patent examination?

In patent examination, there is a crucial distinction between admissions and mere arguments. MPEP 2129 provides guidance on this matter:

“Mere arguments or statements that a reference is not prior art are not admissions that it is prior art.”

This distinction is important because:

• Admissions are statements that acknowledge certain information as prior art and can be used against the applicant in both anticipation and obviousness determinations.
• Mere arguments are statements disputing the status of a reference as prior art and cannot be used as admissions against the applicant.

For example:

• An admission: “Our previous product, as described in our 2018 catalog, included feature X.”
• A mere argument: “The Smith reference does not qualify as prior art because it was not publicly available before our filing date.”

Examiners must carefully evaluate statements made by applicants to distinguish between admissions and arguments, ensuring fair and accurate application of prior art in the examination process.

To learn more:

• admissions
• arguments
• prior art
• MPEP 2129
• patent examination