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   Author  Topic: PPH questions  (Read 475 times)
HarrisonBergeron
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PPH questions
« on: Sep 25th, 2006, 8:08pm »
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I've been trying to figure out the Patent Prosecution Highway rules.
 
http://www.uspto.gov/web/offices/com/sol/notices/71fr36323.pdf
 
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?
 
For example:
 
"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.
 
2. (deleted)"
 
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?
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Isaac
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Re: PPH questions
« Reply #1 on: Sep 25th, 2006, 9:11pm »
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You can amend and argue on appeal, but if you don't amend you cannot separately argue claim 2.  
 
It seems to me that the limitation on appeals for dependent claims could encourage less than full treatment of such claims during prosecution.
 
As for conversion of a provisional to a nonprovisional, generally that's a poor option compared to claiming priority to the provisional although there may be some special cases where you'd might do it.
« Last Edit: Sep 25th, 2006, 9:21pm by Isaac » IP Logged

Isaac
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