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

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.

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.