Patent prosecution is adversarial by design. The statute puts the burden on the Examiner to establish a prima facie case, and it puts the burden on the applicant to rebut it, and that structure inevitably produces friction. (See a recent article by David Boundy on the burdens in patent prosecution, which also provides some great tips on ensuring that the USPTO actually follows the proper burden allocation). Some of that friction is healthy. A well-reasoned rejection sharpens an applicant’s thinking about claim scope, and a well-reasoned response sharpens an Examiner’s understanding of the invention. But the same structure can also calcify into something less productive, where each side digs into a position and prosecution becomes a contest of wills rather than a search for the correct scope of protection.

The Manual of Patent Examining Procedure does not actually contemplate this kind of trench warfare. MPEP § 707.07 instructs that an Examiner’s action “should be constructive in nature and should offer a definite suggestion for correction,” and directs Examiners to identify when a claim would be allowable if amended and to say so on the record. The interview provisions point the same direction. The MPEP describes a properly conducted interview as a way to bridge the gap between an examiner and an applicant, resolving substantive issues that might otherwise linger through multiple rounds of paper prosecution. From the MPEP:

When an application discloses patentable subject matter and it is apparent from the claims and applicant’s arguments that the claims are intended to be directed to such patentable subject matter, but the claims in their present form cannot be allowed because of defects in form or omission of a limitation, the examiner should not stop with a bare objection or rejection of the claims. The examiner’s action should be constructive in nature and, when possible, should offer a definite suggestion for correction. Further, an examiner’s suggestion of allowable subject matter may justify indicating the possible desirability of an interview to accelerate early agreement on allowable claims.

If the examiner is satisfied after the search has been completed that patentable subject matter has been disclosed and the record indicates that the applicant intends to claim such subject matter, the examiner may note in the Office action that certain aspects or features of the patentable invention have not been claimed and that if properly claimed such claims may be given favorable consideration.

This reflects an institutional expectation that examination, even when a rejection is maintained, should include a path forward.

In practice, whether that expectation is met often comes down to the personalities on both sides of the file. Some Examiners treat every rejection as a hill to defend indefinitely, and some applicants treat every rejection as an insult to be argued into submission. Prosecution with either type can be exhausting and unproductive. But plenty of Examiners will tell you, sometimes explicitly, exactly what would get an application allowed, and plenty of applicants are simply too committed to their original claim language to hear it. That can be a mistake, and not only because it can mean leaving an easy allowance on the table. Arguing a position that the record itself suggests you cannot win also builds a prosecution history that can follow the eventual patent for the rest of its life, narrowing claim scope through argument-based estoppel even where a straightforward amendment would have cost less. Sometimes the more conservative move, from a client-protection standpoint, is not to keep fighting for the broadest possible language in a vacuum but to take the wording the Examiner is all but handing you and move on. You catch more flies with honey than vinegar, and you catch more allowances by listening than by repeating yourself louder.

A recent decision from the Patent Trial and Appeal Board, Ex parte Heer, Appeal 2026-001307 (PTAB 2026), illustrates the dynamic well, precisely because the Examiner’s suggested fix is stated in the record in almost so many words.

The application, Serial No. 17/261,258, is directed to an electric motor with a wiring unit that connects the coils of a segmented stator. Claim 16, the claim on appeal, recites:

16. An electric motor, comprising:
    a rotor rotatable about an axis of rotation; and
    a stator including multiple coils, each coil having two coil
    connections, the stator including multiple stator segments, each
    stator segment having exactly one coil, the coils being connected
    to one another with the aid of a wiring unit including a carrier
    part adapted to accommodate multiple wiring elements set apart
    from one another, the wiring unit being situated at an axial end
    of the stator and/or concentrically with the axis of rotation;
    wherein the wiring elements include at least three first
    wiring elements, each first wiring elements having two and/or2
    exactly two contacting regions set apart from one another and a
    connection region connected to the contacting regions, the
    connection region arranged between the contacting regions, the
    contacting regions of each first wiring element being connected
    to, electrically connected to, and/or integrally connected by laser
    welding to one of the coil connections at a connection point, a
    region covered by the connection region of one of the first wiring
    elements in circumferential and radial directions overlapping
    with a region covered by the connection region of another one of
    the first wiring elements in the circumferential and radial
    directions; and
    wherein regions covered by the connection regions of the
    first wiring elements in an axial direction are identical, and
    regions covered by the connection regions of the first wiring
    elements in the radial direction are identical.

The Examiner rejected claim 16 as anticipated by Igarashi (JP H06233483 A), a reference disclosing a wiring connection unit made of stacked, ring-shaped conducting members separated by insulators. The Examiner pointed to two components in Igarashi’s Figure 5, annotated as connection regions of the claimed first wiring elements, and found that those two regions “will look identical in axial and radial directions similar to the instant invention.”

Appellant pushed back hard on that finding, and on the record, Appellant had the better of the underlying factual argument. Igarashi’s own disclosure shows three conductive members and two insulators stacked in a column, each occupying a distinct position along the stack. Appellant argued, with a supporting diagram, that these components sit at different axial positions and therefore cannot be read as occupying an “identical” region in the axial direction. Put differently, Appellant argued that Igarashi’s stacked conductors cannot simultaneously occupy the same axial space, and that the Examiner’s finding of “identical” axial regions simply does not match what Igarashi discloses.

The Examiner did not dispute Appellant’s characterization of Igarashi. Instead, the Examiner’s Answer conceded that “the identified regions of Igarashi do not occupy the same ‘axial position’ since they are planar, flat elements which overlap,” and went on to state plainly that “replacement of the term ‘direction’ with ‘position’ would distinguish the prior art of record.” That is about as direct a roadmap as an Examiner ever puts in writing. The Examiner was saying, in substance, that the claim as drafted did not capture the distinction Appellant was trying to argue, but that a fairly modest amendment would fix it.

Appellant did not take the hint, at least not by the time the case reached the Board, and the Board affirmed. The Board agreed with the Examiner that the claim language, as written, did not require that the connection regions occupy the same axial position or the same axial space. The Board’s reasoning turned on a close, and fairly persuasive, textual comparison. Appellant’s own specification uses the phrase “regions covered” in the plural, but only to describe two regions total, one in the axial direction and one in the radial direction. Claim 16, by contrast, separately recites plural “regions covered” within the axial direction and plural “regions covered” within the radial direction. Read on its own terms, according to the Board, the claim describes multiple regions in the axial direction that are identical to one another, and multiple regions in the radial direction that are identical to one another, not a single shared region in either direction. Appellant’s argument that the connection regions must occupy the “same axial space” was, in the Board’s view, an argument addressed to a narrower claim than the one actually on appeal, and the Board found no error in the rejection and sustained it, along with the associated obviousness rejections that Appellant did not separately contest.

Granted, as the Examiner provided the hint in the Answer, the Appellant might have had to file an RCE at that stage to enter the amendment (although the Examiner would have discretion to enter the amendment). Further, the Applicant can still consider a narrower claim amendment after the appeal (with RCE), and so perhaps they will reconsider.

Whether an amendment along the lines the Examiner suggested was compatible with Appellant’s business objectives for the claim scope is a question this decision cannot answer, and there may well have been reasons, strategic or otherwise, for holding the broader line. But if the goal was simply to secure protection reasonably tied to the structural distinction Appellant kept arguing in its briefing, the Examiner had already shown the door.

This is also where the estoppel concern becomes more than theoretical. By arguing, across an Appeal Brief and a Reply Brief, that the claim requires Igarashi’s connection regions to occupy the “same axial space,” Appellant built a prosecution history describing a narrower invention than the pending claim actually recites, without ever amending the claim to add that limitation. If this application returns to prosecution and the claim is eventually amended along the lines the Examiner proposed, that argument-laden history will still be sitting in the file, potentially available to inform claim construction or to support a narrowing argument in later litigation.

None of this is an argument for capitulating to every rejection, or for treating every Examiner’s suggestion as gospel. Examiners are sometimes wrong about what would distinguish the prior art, and there are plenty of good reasons, client-driven and otherwise, to hold a line even when a narrower claim is readily available. But when an Examiner has effectively identified the fix, and the fix is one the applicant is arguing anyway, continuing to argue the point on appeal is likely not the most efficient path. It multiplies cost, it risks an affirmance, and it can leave behind an argument-based prosecution history that narrows the eventual claim anyway. Recognizing that an adversarial posture has stopped serving the client, and that the Examiner is, in effect, offering a way out, is its own kind of advocacy. Sometimes the best argument is the amendment you were already prepared to make.