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.