Argument is a critical part of a response to an Office Action. The argument explains difference between a claimed feature of an Applicant’s disclosure and an invention of a reference cited in the Office Action. The argument for the claimed feature needs to effectively communicate why the cited reference does not describe the claimed feature. An effective argument should be a persuasive write-up which includes a rationale for differentiating the claimed feature from the invention.
The Examiner’s rejection for the claimed feature forms the basis of the argument, followed by the facts corresponding to the Examiner’s rejection from the cited reference. The argument progresses with a rationale and a conclusion. The rationale includes statement(s) based on the cited reference, that helps to systematically arrive at the conclusion. In general, the rationale attempts to establish how the invention of the cited reference works differently from the claimed feature.
The argument should be mindfully drafted to avoid any fallacy, which may undermine the validity/strength of the argument. The most likely fallacies that one may come across in the argument in a response are formal fallacies, such as a circular fallacy and a straw man fallacy. These fallacies occur when the conclusion is not derived from the rationale. Other than the above-mentioned formal fallacies, the argument may have informal fallacies, such as a faulty conclusion.
The circular fallacy in the argument is characterised by the rationale which is dependent on the conclusion. The argument with the circular fallacy will have a circular structure where the justification for the rationale is obtained from the conclusion. In a circular argument, the statement(s) of the rationale is put down based on the assumption that the conclusion is correct. Furthermore, the argument with the circular fallacy may lack basis to support the conclusion. The circular argument may have a complex structure in which only some of the statements of the rationale is/are derived from the conclusion. It is difficult to recognize the circular fallacy with the complex structure in the argument. The circular fallacy can be identified by analysing the rationale to find whether any statement(s) of the rationale takes support from the conclusion. An example for a circular fallacy is as follows.
- Rationale: The mobile device does not switch between a first battery and a second battery based on a user input.
- Conclusion: Therefore, the mobile device does not receive a user input to switch from the first battery to the second battery.
In above-mentioned example, the rationale is dependent on the conclusion.
The straw man fallacy is characterized by a failure to respond to the Examiner’s interpretation which was taken into account for the rejection of the claimed feature. More specifically, the argument with the straw man fallacy responds to a fallacious Examiner’s interpretation not presented by the Examiner in the Office Action. Often, the fallacious Examiner’s interpretation includes a simplified or misinterpreted version derived deliberately or inadvertently from the Examiner’s interpretation. An analysis of the rationale and conclusion alone would not help to recognize presence of the straw man fallacy in the argument. The straw man fallacy arises from the differences between the Examiner’s interpretation in the Office Action and the fallacious Examiner’s interpretation for which the argument is presented. The straw man fallacy could be identified by validating the rationale of the argument with respect to the Examiner’s interpretation in the Office Action. The validation will examine whether the rationale of the argument rightly responds to the Examiner’s interpretation in the Office Action, and thus determine presence of the straw man fallacy, if any. An example for straw man fallacy is as follows.
- Claimed feature: A laptop with a color display screen.
- Examiner’s reason for rejection: Reference describes an electronic device with a color display screen.
- Rationale: Reference describes an electronic device. Reference does not describe a laptop.
- Conclusion: Therefore, reference does not describe a color display screen in a laptop.
In above-mentioned example, the rationale depends on a straw man fallacy to establish that the reference does not describe a laptop with a color display screen. In the rationale, “Examiner’s reason for rejection” is misinterpreted to circumvent (Examiner’s) interpretation that the electronic device is broad enough to include the laptop.
An informal fallacy includes a fallacy that occurs due to reasons different from an error in a logical structure of the argument. The faulty conclusion is an example of the informal fallacy. In the argument with the faulty conclusion, the conclusion may or may not be derived from the rationale but the conclusion does not match with a scope of the claimed feature. In other words, the conclusion will have a scope different from the scope of the claimed feature.
An argument riding on a fallacy lacks persuasiveness. Therefore, drafting of an argument should include conscious effort to avoid any fallacies in the argument.
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