Drafting Guide
The USPTO rejects submissions that contain "legal arguments." Learn to write strictly factual Concise Descriptions of Relevance — the most common failure point in 3PPS filings.
Point the Examiner to where information lives in a document — never tell them what to conclude. Strip all words like "anticipates," "obvious," or "invalid." Cite specific page, column, and line numbers for every claim element.
The Requirement
Under 37 CFR 1.290(d)(3), each submitted document must be accompanied by a "concise description of the asserted relevance of each submitted document." The key word is factual.
Approximately 1 in 4 submissions (23%) are rejected by the USPTO for non-compliance. The most common reason: accompanying comments that cross the line from factual description into legal argument. A rejected submission cannot simply be corrected — if the filing window closes before you can refile, your opportunity is gone. Source: USPTO Sept. 2014; Nutter McClennen & Fish analysis, Nov. 2015 (early AIA implementation data).
The USPTO will refuse to enter a submission if the concise descriptions contain:
- Legal conclusions ("This patent is invalid because…")
- Arguments about patentability ("The claim is anticipated by…")
- Obviousness analysis ("One skilled in the art would combine…")
- Requests to reject specific claims
You are a librarian, not a lawyer. Your job is to point the Examiner to the location of relevant information. You explain where the information is and what it shows factually. You do not explain why that means the claim should be rejected.
Factual vs. Argumentative Language
| Argumentative (❌ Rejected) | Factual (✓ Accepted) |
|---|---|
| "Smith anticipates Claim 1 because it discloses every element." | "Smith discloses a bicycle (Fig. 1) comprising a frame and two wheels (col. 4, lines 20–25)." |
| "The invention is not novel in view of Jones." | "Jones discloses element A at page 3 and element B at page 5." |
| "It would be obvious to combine Smith and Jones." | "Jones further states that 'element B can be used with systems like those in Smith' (pg. 6, para. 2)." |
| "The claim is invalid under 35 U.S.C. § 102." | "Reference A discloses a motor-assisted wheel hub at column 4, item 10." |
Compliant Examples: Do's and Don'ts
Example 1: Anticipation Scenario
Example 2: Obviousness Scenario
Example 3: Foreign Language Reference
The Mapping Technique
For each reference, create a two-column mapping before you write your description. This keeps your writing factual and organized.
| Claim Element | Location in Reference |
|---|---|
| A bicycle frame | Smith, Fig. 1, item 10; col. 2, lines 1–5 |
| Two wheels attached to the frame | Smith, Fig. 1, items 20, 21; col. 2, lines 6–10 |
| An electric motor | Smith, col. 4, lines 20–25; Fig. 3, item 40 |
| A rechargeable battery | Smith, col. 5, lines 1–8 |
Convert this mapping into prose: "Smith (US 8,123,456) discloses a bicycle frame (Fig. 1, item 10; col. 2, lines 1–5) to which two wheels are attached (Fig. 1, items 20–21; col. 2, lines 6–10). Column 4, lines 20–25 describe an electric motor (Fig. 3, item 40). A rechargeable battery is described at column 5, lines 1–8."
Common Mistakes That Cause Rejection
Description Template
[Reference Name] ([Publication Number], [Date]) discloses [brief factual description — one sentence]. [Element A] is described at [specific location]. [Element B] is disclosed at [specific location]. [If applicable: The document further states that "[direct quote]" ([location]).] [If combination: [Reference 2] discloses [Element C] at [location] and further states "[quote linking references]" ([location]).]
Read your description aloud. Ask: "Am I telling the Examiner what to do, or showing them where information is?" If you're telling — rewrite. See the Filing Checklist for a full pre-submission review.