What should an examiner do if applicant’s arguments are persuasive but a new ground of rejection is necessary?

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 an examiner finds an applicant’s arguments persuasive but determines that a new ground of rejection is necessary, they should follow a specific procedure. As outlined in MPEP 707.07(f):

If applicant’s arguments are persuasive and the examiner determines that the previous rejection should be withdrawn but that, upon further consideration, a new ground of rejection should be made, form paragraph 7.38.02 may be used.

The examiner should use Form Paragraph 7.38.02 to acknowledge the persuasive arguments, withdraw the previous rejection, and introduce the new ground of rejection. It’s important to note that the examiner should also consult MPEP § 706.07(a) to determine whether the Office action may be made final.