“I remember there was a question asking if there are three claims which claim 1 is an independent claim and claims 2-3 are dependent claims and the judge affirms the examiner rejection of claim 1, but not claims 2-3, then what is the next process. ”
The answer was claim 1 will be cancelled, and claims 2-3 can be rewritten as an independent claim by the examiner writing an examiner’s amendment to be allowed or the examiner will let the appellant to do it.
{ 10 comments… read them below or add one }
I am not sure if the examiner does such ammendments, ‘cos in some prev year exams this concept has been tested and the correct ans was the application is abandoned if appealent doesn’t convert the dependent claims (allowable otherwise) into independent claims. I distinctly remember that examiner does such amendments was one of the options. Please comment if anyone thinks otherwise and the MPEP secn. thx
Yes, the originally posted answer is correct – 1 will be cancelled, and 2-3 will be rewritten by examiner’s amendment into independent form. However, this ASSUMES that Claim 1 was initially rejected (and the rejection was then affirmed by the Board), and that 2-3 were originally allowable but for their dependence to Claim 1 (and thus, were objected to).
See 1214.06 – Examiner Sustained in Whole or in Part
1214.06(I.)(B)(1) states:
“If the Board or court affirms a rejection against an independent claim and reverses all rejections against a claim dependent thereon, after expiration of the period for further appeal, the examiner should proceed in one of two ways:
(1) Convert the dependent claim into independent form by examiner’s amendment, cancel all claims in which the rejection was affirmed, and issue the application; or…”
I agree with the original post and Brian. Because the board reversed the rejection of the dependent claims they cannot be held abandoned. The examiner should proceed in one of two ways, 1) convert dependent claims into independent form, cancel independent, of course, and send app to issue, or 2)allow appellant 1-month to rewrite independent claims into dependent form, if appellant is non-responsive, then cancel appealed claims. Pursuant to 1214.06 Examiner Sustained in Whole or in Part [R-3] under heading “I. NO CLAIMS STAND ALLOWED”
After reading 1214 for about half-hour i think i finally understand this:
Basically the only time you use an Examiner’s amendment, or 1 month rewrite is when you have a DEPENDENT claim that was actually REJECTED by the examiner and then subsequently reversed by the court.
If the dependent claim was objected to (b/c it dependence on another claim) it dies/lives with its independent claim.
Thus, why you should rewrite dependent claims into dependent form.
I think Brian’s answer is incorrect. The reason the claims are converted by Examiner’s Amendment in this question is because they were initially rejected by the examiner, and then subsequently reversed by the court. If the dependent claims had been objected to they would have died with their independent claim 1 and the application would be abandoned.
Section (B) shows an MPEP example of exactly the same situation as asked in the question:
1214.06 – NO CLAIMS STAND ALLOWED
(A) If claims 1-2 are pending, and the Board affirms a rejection of claim 1 and claim 2 was objected to prior to appeal as being allowable except for its dependency from claim 1, the examiner should hold the application abandoned.
(B) If the Board or court affirms a rejection against an independent claim and reverses all rejections against a claim dependent thereon, ** after expiration of the period for further appeal, >the examiner< should proceed in one of two ways…..
**TYPO: Thus, why you should rewrite dependent claims into independent form. **
I think newbee(comment 1) is right. Examiner can’t rewrite the claims unless judge had reversed some of examiner’s decisions.
I am still confused. As 1214.06(I) states, there are two situations (A and B), but I can’t tell what is the difference between these two situations. Please advice.
1214.06 Examiner Sustained in Whole or in Part
I. NO CLAIMS STAND ALLOWED
Claims indicated as allowable prior to appeal except for their dependency from rejected claims will be treated as if they were rejected. The following examples illustrate the appropriate approach to be taken by the examiner in various situations:
(A)
If claims 1-2 are pending, and the Board affirms a rejection of claim 1 and claim 2 was objected to prior to appeal as being allowable except for its dependency from claim 1, the examiner should hold the application abandoned.
(B)
If the Board or court affirms a rejection against an independent claim and reverses all rejections against a claim dependent thereon, ** after expiration of the period for further appeal, >the examiner< should proceed in one of two ways:
(1)
Convert the dependent claim into independent form by examiner’s amendment, cancel all claims in which the rejection was affirmed, and issue the application; or
(2)
Set a 1-month time limit in which appellant may rewrite the dependent claim(s) in independent form. Extensions of time under 37 CFR 1.136(a) will not be permitted. If no timely reply is received, the examiner will cancel all rejected and objected to
claims and issue the application with the allowed claims only.
In response to sethz:
In situation (A), the following must occur:
1) Claim 1 is independent claim and was rejected by examiner;
2) Claim 1 fate is affirmed by Board; and
3) Claim 2 is dependent on claim 1, but claim 2 was OBJECTED by examiner due to its dependency on a rejected independent Claim 1.
In this case, the fate of Claim 2 is the same as Claim 1–Claim 2 becomes abandoned along with Claim 1.
In situation (B), the following must occur:
1) Claim 1 is independent claim and rejected by examiner;
2) Claim 1 fate is affirmed by Board;
3) Claim 2 is a dependent on claim 1, but claim 2 was REJECTED by examiner; and
4) Board reverses examiner’s Claim 2 rejection (i.e. Claim 2 is now allowable)
In this case, the the examiner should proceed via (1) or (2).
The correct answer to the original fact scenario, (i.e. what is the next step for examiner) will depend if Claim 2 was REJECTED or OBJECTED to by the examiner prior to appeal.
After reading and re-reading 1214.06 I & II, I have to agree with Frank L.
But would still like to hear a definite comment, though!