700 Examination of Applications

Clarify 7.38: "any of the references being used" is incorrect

Subject: MPEP 707.07(f), form paragraph 7.38 (p. 700-160, Nov. 2015)


The current language says "Applicant’s arguments ... are moot because [they] do not apply to any of the references being used in the current rejection." However, I regularly see this paragraph in second 103 rejections when some references have been carried forward. Would you please update the language to match how it is used, or add a separate form paragraph for this situation?



- A non-final action rejects claim 1 under 103 over Smith in view of Jones.

- Applicant amends and argues against Smith and Jones in response.

- The final action removes the Smith+Jones rejection, but rejects claim 1 over Jones in view of Fritz. The final action includes para. 7.38.


In this example, Jones is still part of the rejection. Therefore, it is not technically correct to say that "Applicant's arguments ... do not apply to _any of the references being used_" (emphasis added). I suggest as more accurate text something like "Applicant's arguments do not apply to the present reference or combination of references being applied against the claim."


This idea is supported in the MPEP itself. The Examiner Note for para. 7.38 says that "The examiner must ... address any arguments ... still relevant to any references being applied."


As always, thanks for considering this request! Any word on when the next publication of the MPEP will be? I know there are a fair number of changes in the queue from this site.



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Idea No. 221