COMMON ARGUMENTS TO SHOW THAT THE EXAMINER ERRED
Present well-supported arguments to show that the examiner:
- misunderstood or mischaracterized the claimed invention or the pending claims,
- misunderstood the cited prior art, and/or
- misunderstood the law or legal basis for the rejection
Argument: misunderstood the invention
- The examiner’s characterization of the claimed invention, or the examiner’s interpretation of the claim language, is inconsistent with your specification.
Argument: misunderstood the prior art
- The examiner’s understanding of a prior art reference is incorrect, e.g., why the examiner erred in finding that the prior art reference discloses or suggests a particular claim element.
Argument: misunderstood the law
- The examiner failed to apply the law correctly.
Argument: use of evidence
- Direct the Board’s attention to evidence in the record, e.g., prior art of record, or affidavits or declarations from experts, that supports your argument.
Argument: use of case law
- If you are aware of case law, i.e., a previous decision of the PTAB or a federal court, that supports your position, explain how the case applies to the facts of your case and shows that the examiner erred.