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   Dep claim obvious if indep claim is not?
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   Author  Topic: Dep claim obvious if indep claim is not?  (Read 1209 times)
michael73
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Dep claim obvious if indep claim is not?
« on: Jul 4th, 2007, 3:52am »
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Hi,
 
some of my dependent claims were rejected under 103(a), although the independent claim was not. How is that possible? If A is unobvious, then shouldnt A+B also be unobvious? hmmm, on second thought, maybe that is possible. But wouldnt an obvious dependent claim render the independent claim unpatentable?
 
I did get a 102(b) rejection on the independent claim. But I am sure I can easily argue that one.  
 
I read in another thread, that the teachings cited by the examiner must teach ALL the limitations of a claim. In my case, one could say that they teach the limitation of the dependent claim, but they do not teach the limitations of the independent claim.
 
Thanks for your help!
 
Michael
« Last Edit: Jul 4th, 2007, 7:28am by michael73 » IP Logged
Bill Richards
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Re: Dep claim obvious if indep claim is not?
« Reply #1 on: Jul 4th, 2007, 1:06pm »
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I think the way to look at it is this:  For whatever reason, the examiner has rejected your independent claim.  The fact that you think you can argue your way around it is irrelvant at this time.  So, the examiner next looks at the dependent claim, which, of course has all the limitations of the independent claim as well as the dependent claim limitations.  That's the claim the examiner thinks is obvious.  He has to do that, because, for all he knows, you can't get around his 102(b) rejection so he has to address the dependent claim as a whole claim.  Of course, you are correct, if the independt claim is allowed, the dependent claim should also be allowed.
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William B. Richards, P.E.
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michael73
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Re: Dep claim obvious if indep claim is not?
« Reply #2 on: Jul 5th, 2007, 3:07am »
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Thanks Bill!!
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