How should arguments be presented in a patent appeal brief?

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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. According to MPEP 1205.02 , arguments in a patent appeal brief should be presented as follows: Each ground of rejection must be argued under a separate heading that clearly identifies the ground of rejection being contested. For each ground of rejection applying to two or more claims, the claims may be argued separately, as a group, or as a subgroup. When multiple claims are argued as a group or subgroup, the Board may select a single claim from the group and decide the appeal based on that claim alone. Under each heading identifying the ground of rejection, any claims argued separately or as a subgroup shall be placed under a separate subheading that identifies the claim(s) by number. The MPEP states: “ The arguments shall explain why the examiner erred as to each ground of rejection contested by appellant. ” It’s important to note that “ A statement which merely points out what a claim recites will not be considered an argument for patentability of the claim. “ Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Claims May Be Argued Separately, As A Group, Or Subgroup MPEP 1205 Permitted Claims May Be Argued Separately, as a Group, or Subgroup MPEP 1205.02 Permitted Separate Heading for Each Ground of Rejection MPEP 1205.02 Required Separate Heading for Each Ground of Rejection MPEP 1205 Required Claims Must Be Argued for Patentability MPEP 1205 Required Board Can Decide on Single Claim for Grouped Rejections MPEP 1205 Permitted Single Claim Selection for Grouped Rejections MPEP 1205.02 Permitted Separate Argument for Each Claim Required MPEP 1205.02 Argument Requirement for Appeal Brief MPEP 1205 Required Appellant Must File Appeal Brief Within Two Months MPEP 12...