Arguing Well
But first, a brief comedic diversion:



There are many facets of the job of patent examiner. Lots of searching, legal and technical research and analysis, and writing. There is, also, a bit of arguing. The nature of the job is that examiners are in a pretty much constant state of disagreement with attorneys.

Addressing an attorney's arguments can be challenging, although obviously if your prior art is solid and your rejection is strong, it is less of an issue.

Of course, occasionally an attorney submits such a lengthy response that the challenge is just to find the real arguments amongst all the blather.

I sometimes see responses where the attorney seems to make it a mission to inflate the length of their response, usually at the expense of clarity and conciseness. A couple of the more common practices I've seen include repeating the same arguments for multiple claims, and the ever-popular 3-page (and that seems to be the standard length) treatise on the requirements of making a rejection under 103, including a recitation of the statutory and legislative history. I really wouldn't think that there's much of a chance that these 'history of 103'-type arguments would have much chance of success, but I suppose it doesn't hurt to get your arguments on the record, especially since (I strongly suspect) they are pre-written and just dropped routinely into the attorney's remarks.

This type of practice does have the potential to cause problems, though, because when one sees what they perceive as boilerplate arguments, the natural inclination is to skip ahead a bit, which means that there is always the potential to miss relevant arguments.


So, what would be great for me? I'd love to see arguments formatted more consistent with appeal practice. If each distinct argument were presented as a concise statement (maybe as bullet points?), and followed by the supporting remarks, the possibility of missing an argument that needs to be addressed would be precluded.

Truth be told, I'd appreciate this type of response most specifically for when I'm reviewing the office actions of my junior examiners. They occasionally miss arguments that they should be responding to. (I'm sure it's just an oversight, and not an instance of conveniently overlooking an argument that would be tough to answer.) It takes time to go through all of the attorney's remarks to verify that the relevant arguments have been addressed by the examiner.

I'm actually not sure why there seems to be such an inconsistency between the styles utilized by attorneys when arguing their case before the examiner for a normal rejection and for an appeal brief, besides the obvious facts that there are specific guidelines for appeal briefs, and that the arguments in a brief are meant not only for the examiner, but also for the judges sitting on the BPAI.

It would seem to be a simple matter to carry the same style of presenting arguments across all attorney's submissions, though, and the appeal brief style just seems to me to be much better organized than much of what I see in my day-to-day amendments.