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Responding to Obviousness Rejections of Dependent Claims May 12, 2008

Posted by Brian Schar in Patent prosecution.
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A common flaw in an Office Action is the rejection of an independent claim as anticipated under 35 U.S.C. 102, but not as obvious under 35 U.S.C. 103, and the further rejection of claims that depend from that independent claim as obvious under 35 U.S.C. 103.

In this situation, don’t rush to respond substantively to the obviousness rejections without considering MPEP 2143.03: “If an independent claim is nonobvious under 35 U.S.C. 103, then any claim depending therefrom is nonobvious.” Rarely does the MPEP make such a clear and useful pronouncement. The rationale is simple: a claim that depends from a nonobvious independent claim is nonobvious because it contains all of the limitations of that independent claim plus a further limitation. (Hartness Int’l. Inc. v. Simplimatic Engineering Co., 819 F.2d 1100 (Fed. Cir. 1987), cited by In re Fine, 837 F.2d 1071 (Fed. Cir. 1988), cited by MPEP 2143.03).

When responding to an Office Action in which dependent claims are rejected as obvious but their parent, independent claim is not, consider requesting the withdrawal of the obviousness rejections of the dependent claims under MPEP 2143.03. One resulting benefit is the elimination of the file history estoppel associated with the improper rejection of the dependent claims. Further, a subsequent rejection of the non-amended independent claim as obvious would be a classic example of piecemeal prosecution, which would provide another, independent ground of appeal to the BPAI.

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