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A small gift from the Federal Circuit August 21, 2009

Posted by Brian Schar in Federal Circuit, Patent prosecution, USPTO.

The Federal Circuit gave patent prosecutors a little gift last week, in the form of Callaway Golf Co. v. Acushnet Co.  One of my pet peeves about patent prosecution is the prevalence of low-value 103 rejections of dependent claims.  Given that a dependent claim is allowable if the parent independent claim is allowable (along with, of course, the intervening claims), and given that one would want to amend or argue the parent independent claim to make it allowable, it seems like a waste of time for Examiners to spend any time at all making a 103 rejection of a dependent claim. 

Callaway gives practitioners a tool for getting rid of those rejections, holding unequivocally that “[a] broader independent claim cannot be nonobvious where a dependent claim stemming from that independent claim is invalid for obviousness.”  (No. 2009-1076, slip op. 21-22)  That is, if a dependent claim is obvious, then the parent independent claim is obvious.  The logical contrapositive of this holding is that if a parent independent claim is nonobvious, then all dependent claims are nonobvious. 

While this is not an argument that one would use in isolation, it nevertheless provides another tool to use in Office Action responses.  I would hope that the USPTO will give the Examiners some training on this case.  It would save them time if they didn’t examine dependent claims for obviousness if they didn’t find the independent claim obvious.


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