What form paragraphs should examiners use when responding to applicant’s arguments?

Examiners have several form paragraphs available to respond to applicant’s arguments, depending on the situation. According to MPEP 707.07(f):

• Form paragraphs 7.37 through 7.37.13 may be used where applicant’s arguments are not persuasive.
• Form paragraphs 7.38 through 7.38.02 may be used where applicant’s arguments are moot or persuasive.

These form paragraphs cover various scenarios, such as arguments being unpersuasive due to hindsight reasoning (7.37.03), nonanalogous art (7.37.05), or when arguments are persuasive but a new ground of rejection is introduced (7.38.02). Examiners should select the most appropriate form paragraph based on their analysis of the applicant’s arguments.

To learn more:

• patent examination
• form paragraphs
• applicant arguments
• examiner response