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Author Topic: Dependent Claim Rejections  (Read 1006 times)

04274108

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Dependent Claim Rejections
« on: 01-14-05 at 04:18 pm »

Hello.  

Assume that all claims are rejected in an Office Action and that the independent claims have been amended.  

Is it necessary to amend the dependent claims if one believes that they do not recite a previous invention in conjunction with the amended independent claims?

Once the independent claims have been amended, is it necessary to argue why the dependent claim passes sections 102 and 103?

If any dependent claim is amendended or cancelled, is it necessary to elaborate the reasons why?


Thanks
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Isaac

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Re: Dependent Claim Rejections
« Reply #1 on: 01-14-05 at 04:58 pm »

Generally speaking if the independent claims are allowable
over the prior art, claims depending from them are also
allowable over the prior art.  With respect to your office action
a simple statement that the dependent claims are allowable
because they include the limitations would probably cover
the bases in an office action.

However amending the independent claims can cause or leave
non art problems in your dependent claims.  You have to make
sure those things are taken care of.

As for your question about explaning cancellations and
amendments to dependent claims, you must address issues
raised in the office actions. You might not want to put
superfluous things in the record that will be brought up
later, but you might want to put things in the record that
address possible estoppel issues created by silence.  So how much
or how little to say must be evaluated on a case by case
basis.  You might want the advice of a professional who knows
the details of your case.
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Isaac

04274108

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Re: Dependent Claim Rejections
« Reply #2 on: 01-14-05 at 05:27 pm »

Thanks again Isaac.   Great answers!
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