« on: Sep 25th, 2006, 8:08pm »
I've been trying to figure out the Patent Prosecution Highway rules.
One in particular has me puzzled: the requirement that the applicant cannot argue for the patentability of dependent claims: "(5) ... the applicant is agreeing not to separately argue the patentability of any dependent claim during any appeal in the application."
Does this mean that if the independent claim is rejected based on prior art, but that a dependent claim combined with the independent claim would not have been rejected, the applicant is out of luck?
"1. A gizmo comprising a thingamajig, a wozzit, and a plurality of widgets.
2. The gizmo of claim 1 further comprising a gadget."
Examiner finds good PA to reject claim 1, but including a gadget under claim 2 is clearly novel. Under the PPH's rules, is the application toast, or can it be amended to:
"1. (amended) A gizmo comprising a thingamajig, a wozzit, a plurality of widgets, and a gadget.
Also, from the phrasing of the announcement, I am under the impression that a provisional application cannot be converted to a nonprovisional and still qualify for the PPH. However, can a nonprovisional be filed, claiming priority to a provisional, and still qualify?