Can an appellant choose not to argue certain claim rejections?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-27 10 Rules 5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. Yes, an appellant can choose not to present arguments for certain claim rejections during a patent appeal. However, it’s important to note that, as stated in MPEP 1215.03 , “ such arguments and evidence are waived for purposes of the appeal and the Board may summarily sustain any grounds of rejections not argued. ” This means that if you don’t argue against a rejection, the Board might uphold that rejection without further consideration. For more information on how the Board handles unanswered rejections, refer to MPEP 1205.02 and MPEP 1214.05 . Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Examiner May Withdraw Claim Rejection MPEP 1205.02 Permitted Inclusion of Arguments and Authorities Required MPEP 1205 Required Separate Heading for Each Ground of Rejection MPEP 1205 Required Brief Must Contain Arguments and Citations MPEP 1205.02 Brief Must Fully State Arguments and Citations MPEP 1205.02 Required Present Appellant's Arguments and Basis for Each Rejection Ground MPEP 1205.02 Recommended Inclusion of Arguments and Authorities Required MPEP 1205.02 Inclusion of Arguments and Authorities in Appeal Brief Required MPEP 1205.02 Recommended Separate Heading for Each Ground of Rejection MPEP 1205.02 Required Heading for Claim Rejections under 35 U.S.C. 102(a)(2) MPEP 1205.02 Required Other Related FAQs 5 FAQs Collapse What happens if an appellant doesn&#8217;t respond to a new ground of rejection in an examiner&#8217;s answer? What is partial withdrawal in patent appeals? How does a substitute examiner&#8217;s answer affect a patent appeal? How does 37 CFR 41.31(c) affect the appeal process for patent applications? How does the reversal of an examiner&#8217;s dec...