Argument: Preliminary steps

  • Review the prosecution history of your application
  • Decide which rejections and which claims to address
  • Identify your strongest arguments

Argument: Strategic considerations

  • There is no limit on the number of pages
  • BUTthe clearer and more concise your arguments, the better your chances of prevailing
  • Present your strongest arguments first
  • Avoid diluting your strong arguments with weaker ones

**BUT keep in mind: Any rejection you do not address, and any argument you do not present, cannotbe argued later.

Argument: Suggested format

  • Address each ground of rejection under a separate heading
  • Identify the ground of the rejection by claim number, statutory basis, and references (if any)

Argument: Claim grouping

  • If the same argument applies to two or more claims, consider arguing the claims as a group under a single heading or sub-heading.

Argument: Arguing claims separately

  • Use a separate heading or sub-heading for any claim that you want the PTAB to consider separately.

Argument: burden

  • The initial burden of proof rests with the examiner to clearly state the reasons for the rejection
  • After the examiner satisfies his burden, then the burden shifts to you to explain why you believe the examiner has made an error.

Argument: explain why

  • For ANY argument of examiner error, ALWAYS give reasons to support your position.