How should an examiner respond to arguments in an appeal brief?

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.

When responding to arguments in an appeal brief, an examiner should:

• Address each argument presented by the appellant
• Provide explanations for disagreements with appellant’s arguments
• Use headings and subheadings that parallel those in the appellant’s brief

The MPEP provides guidance: “A statement of whether the examiner disagrees with each of the arguments of appellant in the brief with respect to the issues presented and an explanation of the reasons for disagreement with any such argument. The examiner must use headings and subheadings paralleling the headings and subheadings utilized in the appellant’s brief.“