American law schools generally teach students to organize their paragraphs according to IRAC: issue, rule, analysis, conclusion. (This structure is sometimes modified to CIRAC, in which the paragraph is introduced with a conclusory sentence.) Patent Applicants should follow the same guidelines to present their arguments effectively.
In patent prosecution, the “issue” tends to be the statement of the rejection, such as “Claim 1 was rejected as obvious over A in view of B.” Even this statement is a bit of shorthand. A more formal presentation of this statement might be, “The Office Action asserted a prima facie case of obviousness has been established over A in view of B.”
Applicant presumably has some reason for disagreeing with the rejection, such as a legal argument or an amendment to the claims. Thus, the rule then is a statement of Applicant’s ground for traversal. The Applicant might state, “A and B do not disclose or suggest the recited feature of X.” Again, this is a bit of shorthand for the more complex thought that, “A and B would not have rendered obvious the claimed subject matter, because A and B do not disclose or suggest each of the recited features.”
The typical Applicant understands the analysis and conclusion portions. In addition, these portions are fact-specific and somewhat self-explanatory. So, I won’t waste time on those.
Now, let’s consider a more complicated example, in which a rejection is traversed for reasons beyond the claim language. Specifically, let’s consider an example in which the Applicant argues modifying A in view of B renders A unsatisfactory for its intended purpose under MPEP 2143.01 V.
Here, an Applicant might state the issue as, “The Office Action asserted modifying A in view of B would have been obvious to the skilled artisan.” The rule statement might be, “If a proposed modification would render A unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification.” MPEP 2143.01 V. Naturally, the Applicant would then analyze the relevant facts of A and B to establish the conclusion that the Examiner has not made a prima facie case of obviousness.
When an Examiner reads the Applicant’s argument, the Examiner is aware (a) new grounds of argument are being introduced, (b) the Applicant is arguing against combining the references, rather than the typical argument that the combination of references is lacking a feature, and (c) the specific grounds on which the Applicant is attacking the combination. Accordingly, the Examiner is in the proper mindset to receive Applicant’s arguments.