Comments on: Q) Claims

By: Alfredo

Alfredo — Tue, 24 Jan 2012 17:35:56 +0000

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.

By: Jen

Jen — Wed, 18 Jan 2012 23:19:22 +0000

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.

By: Bigbadvoododaddy

Bigbadvoododaddy — Sun, 03 Jul 2011 20:46:42 +0000

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

By: Bigbadvoododaddy

Bigbadvoododaddy — Sun, 03 Jul 2011 20:43:27 +0000

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

By: Overworkked

Overworkked — Thu, 28 Apr 2011 19:05:46 +0000

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

By: misspatent

misspatent — Fri, 01 Apr 2011 18:30:12 +0000

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

By: Joe C.

Joe C. — Mon, 21 Mar 2011 18:28:24 +0000

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.

By: patenttips

patenttips — Sat, 19 Mar 2011 22:02:56 +0000

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.

By: toomuch23

toomuch23 — Fri, 29 Oct 2010 14:29:10 +0000

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

By: BM

BM — Sat, 29 May 2010 20:31:08 +0000

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”