2278 Action Following Decision [R-08.2017]
MPEP § 1214 through § 1214.07 provide the procedures to be followed after the conclusion of the appeal to the Board, for both patent applications and ex parte reexamination proceedings, except as provided for in this Chapter.
Claims indicated as allowable but objected to prior to appeal because of their dependency from rejected new or amended claims will be treated as if they were rejected. In other words, dependent claims with allowable subject matter but based on rejected new or amended claims would be “objected to” in the same manner as in applications and handled in a similar manner as discussed in MPEP § 1214.06. However, allowable dependent claims based on an unamended patent claim that has been rejected, canceled, or otherwise not subject to reexamination should not be objected to or rejected because of its dependency. See MPEP § 2260.01 and subsection II below.
I. EXAMINER SUSTAINED IN WHOLE OR IN PART - NO CLAIMS STAND ALLOWEDThe following examples illustrate the appropriate approach to be taken by the examiner in various situations in a reexamination proceeding assuming no further appeal has been filed and the time period for filing a further appeal has expired:
- (A) Example 1: Amended claim 1 is rejected in the examiner’s answer and claim 2 was objected to prior to appeal as being allowable except for its dependency from amended claim 1. If the Board affirms a rejection of amended patent claim 1, the examiner should prepare a “Notice of Intent to Issue Ex Parte Reexamination Certificate” (NIRC) indicating that claims 1 and 2 are canceled.
- (B) Example 2: All claims are
rejected in the examiner’s answer. If the Board affirms a rejection against a new
or amended 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 prepare the NIRC as appropriate; 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 1.550(c) will not be permitted. If no timely reply is received, the examiner will prepare the NIRC indicating all claims are canceled, because no claims stand allowed.
The appellant is not required to file a reply, and the examiner prepares the NIRC indicating which the claims stand allowed and which claims are canceled. It is not necessary for the patent owner to cancel the rejected claims because they may be canceled by an examiner’s amendment. The following examples illustrate the appropriate approach to be taken by the examiner in various situations in a reexamination proceeding assuming no further appeal has been filed and the time period for filing a further appeal has expired:
- (A) Example 1: Amended claim 1 is rejected in the examiner’s answer, claim 2 was objected to prior to appeal as being allowable except for its dependency from amended claim 1, and independent claim 3 was allowed prior to the appeal. If the Board affirms a rejection of amended claim 1, the examiner should issue the NIRC with claims 1 and 2 as canceled and claim 3 as confirmed or patentable.
- (B) Example 2: Amended claim 1 and its dependent claim 2 are
rejected in the examiner’s answer and independent claim 3 was allowed prior to the
appeal. If the Board affirms a rejection against amended independent claim 1, and
reverses all rejections against dependent claim 2, the examiner should either:
- (1) Convert dependent claim 2 into independent form by examiner’s amendment, cancel claim 1 in which the rejection was affirmed, and issue the NIRC indicating claims 2 and 3 as patentable and claim 1 as canceled; or
- (2) Set a 1-month time limit in which appellant may rewrite dependent claim 2 in independent form. Extensions of time under 37 CFR 1.550(c) will not be permitted. If no timely reply is received, the examiner will cancel claims 1 and 2 and issue the NIRC indicating only claim 3 as patentable.
- (C) Example 3: Unamended patent claim 1 is rejected in the examiner’s answer, claim 2 was objected to prior to appeal as being allowable except for its dependency from unamended patent claim 1 and independent claim 3 was allowed prior to the appeal. Dependent claim 2 may be either unamended or amended. If the Board affirms a rejection of unamended patent claim 1, the examiner should issue the NIRC with claim 1 as canceled and claims 2 and 3 as confirmed or patentable.
- (D) Example 4: Unamended patent claim 1 and dependent claim 2 are rejected in the examiner’s answer. Dependent claim 2 may be either unamended or amended. If the Board affirms a rejection of unamended patent claim 1 and reverses the rejection of dependent claim 2, the examiner should prepare the NIRC indicating that claim 1 is canceled and claim 2 is allowed.
