Q) Claims

by patentbar on August 2, 2008 · 23 comments

in Exam Questions

“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.

{ 23 comments… read them below or add one }

1 newbeeNo Gravatar May 29, 2009 at 1:37 pm

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

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2 brianNo Gravatar June 10, 2009 at 4:03 pm

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…”

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3 BMNo Gravatar May 29, 2010 at 4:31 pm

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”

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4 BigbadvoododaddyNo Gravatar July 3, 2011 at 4:43 pm

where does the original poster say that the claims 2-3 were reversed. It says they were not affirmed.
This is those cases where 2-3 are otherwise allowable except for their dependance on claim 1. If only claim 1 is under appeal, then if the board affirms rejection of claim 1. 2-3 are also kaput. Entire app will go abandoned

5 JakeNo Gravatar October 11, 2009 at 9:43 pm

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…..

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6 BigbadvoododaddyNo Gravatar July 3, 2011 at 4:46 pm

Jake – that was an extremely well written synopsis. Thank you

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7 JakeNo Gravatar October 11, 2009 at 9:46 pm

**TYPO: Thus, why you should rewrite dependent claims into independent form. **

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8 KNo Gravatar October 16, 2009 at 7:21 pm

I think newbee(comment 1) is right. Examiner can’t rewrite the claims unless judge had reversed some of examiner’s decisions.

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9 sethzNo Gravatar January 22, 2010 at 3:15 pm

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.

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10 Frank LNo Gravatar February 1, 2010 at 7:06 pm

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).

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11 Frank LNo Gravatar February 1, 2010 at 7:09 pm

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.

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12 SNo Gravatar May 18, 2010 at 9:03 am

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!

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13 toomuch23No Gravatar October 29, 2010 at 10:29 am

similar question April 2003 am # 37

Applicant properly appealed the primary examiner’s final rejection of the claims to the Board of Patent Appeals and Interferences (Board). Claims 1 to 10 were pending in the application. The examiner did not reject the subject matter of claims 7 to 10, but objected to these claims as being dependent on a rejected base claim. Claim 1 was the sole independent claim and the remaining claims, 2 through 10, were either directly or indirectly dependent thereon. After a thorough review of Appellant’s brief and the examiner’s answer, the Board affirmed the rejection of claims 1 to 6. In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following is the appropriate action for the examiner to take upon return of the application to his jurisdiction when the time for appellant to take further action under 37 CFR 1.197 has expired?
(A) Abandon the application since the Board affirmed the rejection of independent claim 1.
(B) Convert the dependent claims 7 to 10 into independent form by examiner’s amendment, cancel claims 1 to 6, and allow the application.
(C) Mail an Office action to applicant setting a 1-month time limit in which the applicant may rewrite dependent claims 7 to 10 in independent form. If no timely reply is received, the examiner should amend the objected to claims, 7 to 10, and allow the application.
(D) Mail an Office action to applicant with a new rejection of claims 7 to 10 based on the Board’s decision.
(E) No action should be taken by the examiner since the Board affirmed the rejection of independent claim 1, the application was abandoned on the date the Board decision was mailed.

Answer is (A), citing 1214.06 as mentioned in the above posts

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14 NarNo Gravatar July 5, 2012 at 8:36 pm

This question is different the board did not comment on rejections 7-10 therefore they stand cancelled. In case board had reversed the rejections on 7-10 that were dependent on claim 1, the examiner would have to rewrite the claims in independent format and allow the application.

See a related question from Old exam
Prosecution before the primary examiner results in the rejection of claim 1. Claim 2 was
objected to as being allowable except for its dependency from claim 1. Independent claim 3 has
been allowed. The rejection of claim 1 is properly appealed to the Board of Patent Appeals and
Interferences. The Board properly affirms the rejection of claim 1. Appellant has filed no
response to the decision of the Board, the appellant has taken no action, and the time for filing
an appeal to the court or a civil action has expired. In accordance with the patent laws, rules and
procedures as related in the MPEP, which of the following actions is the most appropriate
response by the examiner?
(A) The examiner should hold the application abandoned.
(B) The examiner should cancel claim 1, convert dependent claim 2 into independent form by
examiner’s amendment, and allow the application.
(C) The examiner should set a 1‐month time limit in which appellant may rewrite the dependent
claim in independent form.
(D) The examiner should cancel claims 1 and 2 and allow the application with claim 3 only.
(E) None of the above.

(D) is the most correct answer. 37 CFR § 1.197(c); MPEP § 1214.06. This case is specifically set
forth in MPEP § 1214.06 under the heading “Claims Stand Allowed.”

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15 NarNo Gravatar July 5, 2012 at 8:39 pm

See comments from the PTO.

ANSWER: (A) is the most correct answer. MPEP § 1214.06, under the heading “Examiner Sustained in Whole or in Part.” Under the heading “No Claims Stand Allowed” it states “Claims indicated as allowable prior to appeal except for their dependency from rejected claims will be treated as if they were rejected.”
****—-(B) and (C) are not the most correct answers. These options would apply to applications where the Board reversed the rejection of the dependent claims and affirmed the rejection of the independent claim. —-****
(D) is not correct. The Board does not render a decision on objected to claims. See 37 CFR § 1.191(c). (E) is not correct because the mailing of a Board decision does not abandoned an application. See 37 CFR § 1.197(a).

16 tappylilyiNo Gravatar September 7, 2012 at 6:33 pm

Nar’s July 5, 2012 8:39 pm comment about Answer A being the correct answer is the answer for toomuch23’s question. The correct answer for Nar’s question is still D, not A.

17 patenttipsNo Gravatar March 19, 2011 at 6:02 pm

Good discussion.

When claims are objected to due to being dependent upon a rejected claim, if board affirms rejection to independent claims, then no claims are allowable and the case is ABN. Objected claims are not reviewed by the appeals board, they can only be reviewed by petition.

When independent claims are rejected and dependent claims as well, when appealed, judge affirms independent claim rejection but reverses dependent claim rejection, THEN, dependent claims are allowable, and rewritten so as to not depend on the independent claim, the case goes to issue.

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18 Joe C.No Gravatar March 21, 2011 at 2:28 pm

The biggest key to this question for me is not confusing your claim types and paying attention to your assumptions.

scenerio: INDEPENDENT claim has to be cancelled. DEPENDENT claims have to be overturned and allowed by the court.

If your DEPENDENT claim get overturned by the courts, it must be converted to an INDEPDENT claim (since obviously it cannot depend on nothing because at this point they are the only proper claims) and this conversion must be made by an examiner himself through an examiners amendment, or he may delegate this conversion to the appelant.

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19 misspatentNo Gravatar April 1, 2011 at 2:30 pm

The outcomes here underscore why it is important for practitioners to submit amendments after final that put the claims in a better position for appeal and why these amendments are entered as a matter of right. Thus, the smart practitioner would rewrite all dependent claims (that have been objected to solely for reason of their dependence) in independent form

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20 OverworkkedNo Gravatar April 28, 2011 at 3:05 pm

Saw 2 variants on this on 4/27/2011 E8R8. Both seemed to be like repeat questions.

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21 JenNo Gravatar January 18, 2012 at 6:19 pm

Thank you so much for the clarification ! I was struggling with this concept but Jake ( and rest of the posters) made it so easy to understand.

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22 AlfredoNo Gravatar January 24, 2012 at 12:35 pm

Had essentially the same question 1/23/12.
1 rejected
2 allowable but for dependence on claim 1
3 allowed.
Appeals claim 1 only, board upholds rejection, what’s next?
Example was right in Chapter 1200.

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23 KerstinNo Gravatar February 18, 2012 at 1:43 pm

Good discussion. I think I finally get it! Thanks for some good clarification.

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