How should examiners address asserted advantages claimed by applicants?
Examiners should carefully consider and address any asserted advantages claimed by applicants. According to MPEP 707.07(f):
If it is the examiner’s considered opinion that the asserted advantages are not sufficient to overcome the rejection(s) of record, they should state the reasons for their position in the record, preferably in the action following the assertion or argument relative to such advantages.
This approach ensures that applicants know their asserted advantages have been considered, and if an appeal is taken, the Patent Trial and Appeal Board will also be informed. Examiners should also refer to MPEP § 716 et seq. for guidance on treating affidavits and declarations under 37 CFR 1.132.
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