How should an examiner respond to applicant’s arguments in patent prosecution?

According to MPEP 707.07(f), examiners should respond to applicant’s arguments as follows:

• If repeating a rejection, take note of the applicant’s argument and answer the substance of it.
• If withdrawing a rejection due to persuasive arguments, provide reasons for the withdrawal by referring specifically to the applicant’s remarks.
• If making a new ground of rejection after finding arguments persuasive, use form paragraph 7.38.02.

The MPEP emphasizes the importance of addressing all arguments:

Where the requirements are traversed, or suspension thereof requested, the examiner should make proper reference thereto in their action on the amendment.

This approach ensures a clear prosecution history and helps applicants understand the examiner’s position on their arguments.

To learn more:

• Applicant arguments
• Patent prosecution
• Office action response
• Examiner’s reply