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Author Topic: non-compliant response question  (Read 1225 times)

Mord

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non-compliant response question
« on: 07-04-17 at 02:49 am »

After submitting an extensive response to a first office action with claim amendments, another non-final was received rejecting ALL claim amendments as being outside the elected invention (form PTOL-324).  Item 4E was the only checked category which referred to an additional page which contained a two-sentence statement.  "Continuation of 4(e) Other: Claims 1-119 are directed to an invention distinct from and independent from and independent of the invention previously claimed.  As such, the amended claims are drawn to a non-elected invention which renders the response non-responsive."

Most claims were amended.  Many claims were cancelled after their elements were incorporated into other fewer claims.  Upon review, again, all the subject matter contained in the amended claimset existed in the claimset of the elected invention as specified by the examiner.  thus no new matter has been introduced, not from outside the specification, or outside the invention elected.

No rule, law, or procedure was cited.  As mentioned above, many claims were cancelled, but their elements were retained in other amended claims. 

It was clear from the first OA that the examiner understood the invention poorly, if at all.  the amended claimset was presented to state the invention more clearly.

I am planning on responding with a detailed analysis of the amended claims and demonstrating that each element of the amended claims came from the collective elements of the elected claimset.  I would expect the examiner to retain that rejection and issue a final.

However, given that I have never seen such totally unjustified and arbitrary actions from the patent office, is there anything I can do to force the examiner to say exactly what he believes how the boundaries of the elected invention have been exceeded?  I have thought about taking the amended claimset and making those claims all dependent on the various original independent claims.

One other aspect of this second office action.  It was back-dated by a month, with nothing posted in the IFW.  Only when a request for status was submitted did suddenly the office action appear within a couple of hours (about 2 AM EDT) of submitting the request and then the request letter disappeared from the IFW.

Any comments and guidance will be most welcome!
« Last Edit: 07-04-17 at 04:12 am by Mord »
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Tobmapsatonmi

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Re: non-compliant response question
« Reply #1 on: 07-05-17 at 11:07 am »

After submitting an extensive response [got a] (form PTOL-324).  [stating] : Claims 1-119 are directed to an invention distinct from and independent from and independent of the invention previously claimed.  As such, the amended claims are drawn to a non-elected invention which renders the response non-responsive."

[however]: all the subject matter contained in the amended claimset existed in the claimset of the elected invention as specified by the examiner.  thus no new matter has been introduced, not from outside the specification, or outside the invention elected.


Bumping to see if anyone has thoughts on this.  Also, a question for you, OP.  When you amended the claims using subject matter only from other dependent claims in the same set of elected claims, did you do so on a direct dependency basis?  What I mean is, if you amended claim 1 to contain the subject matter of claim 7, did claim 7 originally depend directly from claim 1?  I'm thinking it is possible, although maybe not too likely, to go outside the scope of the original election if you amend in ways that don't follow the original dependencies.
 


One other aspect of this second office action.  It was back-dated by a month, with nothing posted in the IFW.  Only when a request for status was submitted did suddenly the office action appear within a couple of hours (about 2 AM EDT) of submitting the request and then the request letter disappeared from the IFW.

This is just weird.  Maybe a call to the examiner's SPE is in order.


One thing I'm not so clear on - did you get a notice of non-compliant response (normally having a 1-month deadline for reply) or did you get an actual office action (normally a 3-month deadline for reply)? 
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still_learnin

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Re: non-compliant response question
« Reply #2 on: 07-05-17 at 03:20 pm »

After submitting an extensive response to a first office action with claim amendments, another non-final was received rejecting ALL claim amendments as being outside the elected invention (form PTOL-324).  Item 4E was the only checked category which referred to an additional page which contained a two-sentence statement.  "Continuation of 4(e) Other: Claims 1-119 are directed to an invention distinct from and independent from and independent of the invention previously claimed.  As such, the amended claims are drawn to a non-elected invention which renders the response non-responsive."
...
No rule, law, or procedure was cited.  As mentioned above, many claims were cancelled, but their elements were retained in other amended claims. 

This is called "election by original presentation." Described in MPEP 821
http://www.uspto.gov/web/offices/pac/mpep/s821.html

It was clear from the first OA that the examiner understood the invention poorly, if at all.  the amended claimset was presented to state the invention more clearly.

Sounds like a good reason to rewrite claims. But is also way more likely to run into election-by-original-presentation.

If I'm making extensive amendments that I worry about creeping into "another invention" territory, I usually also keep a claim with only minor amendments in there too. Doesn't keep the Examiner from cancelling your extensively amended claims, but the idea is the Examiner will keep the less-amended claims pending, so at least you have some claims being examined.

I am planning on responding with a detailed analysis of the amended claims and demonstrating that each element of the amended claims came from the collective elements of the elected claimset.  I would expect the examiner to retain that rejection and issue a final.

Note that this approach will create a lot of prosecution history that will give a challenger in litigation a lot of ammunition in arguing claim scope. Your client may not like that.

If you're going that route, and you really do expect the Examiner to maintain the rejection, consider filing a petition to traverse the forced election. Election-by-original-presentation is essentially a specific variety of restriction practice, only the Examiner elects and not the Applicant.

However, given that I have never seen such totally unjustified and arbitrary actions from the patent office, is there anything I can do to force the examiner to say exactly what he believes how the boundaries of the elected invention have been exceeded? 

Surely you know you can't force an Examiner to do anything :-) Seriously, no, there's no magic words or actions that will force an Examiner to explain himself. The law isn't much help either -- the notice requirement of 132 allows the Examiner to provide only a rudimentary explanation of any rejection.

Though I suppose this isn't a rejection, so maybe 132 doesn't even apply.

A cynical person would tell you there's no way the Examiner is going to explain his action in detail, that would be as much work as writing a rejection in the first place, which he avoided by cancelling your claims.

I have thought about taking the amended claimset and making those claims all dependent on the various original independent claims.

I'm not an expert on restriction practice, but I don't think that helps.

Most claims were amended.  Many claims were cancelled after their elements were incorporated into other fewer claims.  Upon review, again, all the subject matter contained in the amended claimset existed in the claimset of the elected invention as specified by the examiner.  thus no new matter has been introduced, not from outside the specification, or outside the invention elected.

I get what you're saying, but wanted to caution you that "new matter" has a precise meaning in patent law, and it isn't the right term to use here. The Examiner hasn't said your claims strayed from the spec, but instead has told you that your new claims strayed too far from the original claims, so as to constitute a different invention from the one originally presented.
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still_learnin

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Re: non-compliant response question
« Reply #3 on: 07-05-17 at 03:43 pm »

One thing I'm not so clear on - did you get a notice of non-compliant response (normally having a 1-month deadline for reply) or did you get an actual office action (normally a 3-month deadline for reply)?

Yeah, I wondered about that too. The OP specified "PTOL-324," and the MPEP says this is a form used for non-compliant response.

That's a good thing, gives the OP a chance to reconsider his strategy.

When you amended the claims using subject matter only from other dependent claims in the same set of elected claims, did you do so on a direct dependency basis?  What I mean is, if you amended claim 1 to contain the subject matter of claim 7, did claim 7 originally depend directly from claim 1?  I'm thinking it is possible, although maybe not too likely, to go outside the scope of the original election if you amend in ways that don't follow the original dependencies.

Something like
ORGINAL
Independent 1 = feature X + A
Dep 1.1 = X+B
Independent 2 = feature Y + A
Dep 2.1 = Y+C

NEW/AMENDED
Independent = Y+B.

So all features were present somewhere in the original set of claims, but the particular combination Y+B was not. 

Is that what you're asking about?

I've run across something similar in the context of an After Final amendment. That is, an Examiner refuses to enter a claim to Y+C without an RCE. "Requires a new search," saying the particular combination Y+C had not yet been searched.
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Mord

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Re: non-compliant response question
« Reply #4 on: 07-05-17 at 07:50 pm »

After submitting an extensive response [got a] (form PTOL-324).  [stating] : Claims 1-119 are directed to an invention distinct from and independent from and independent of the invention previously claimed.  As such, the amended claims are drawn to a non-elected invention which renders the response non-responsive."

[however]: all the subject matter contained in the amended claimset existed in the claimset of the elected invention as specified by the examiner.  thus no new matter has been introduced, not from outside the specification, or outside the invention elected.


Bumping to see if anyone has thoughts on this.  Also, a question for you, OP.  When you amended the claims using subject matter only from other dependent claims in the same set of elected claims, did you do so on a direct dependency basis?  What I mean is, if you amended claim 1 to contain the subject matter of claim 7, did claim 7 originally depend directly from claim 1?  I'm thinking it is possible, although maybe not too likely, to go outside the scope of the original election if you amend in ways that don't follow the original dependencies.
 

One other aspect of this second office action.  It was back-dated by a month, with nothing posted in the IFW.  Only when a request for status was submitted did suddenly the office action appear within a couple of hours (about 2 AM EDT) of submitting the request and then the request letter disappeared from the IFW.

This is just weird.  Maybe a call to the examiner's SPE is in order.


One thing I'm not so clear on - did you get a notice of non-compliant response (normally having a 1-month deadline for reply) or did you get an actual office action (normally a 3-month deadline for reply)?


Thanks for your comments.

Most of the claim amendments were done within a set of claim dependencies, but not universally, though entirely within the elected invention, which I believe are allowed.  Also, please note that about half of the 1 - 119 rejected claims were cancelled.  Rather odd that a cancelled claim would violate anything.

The application data page on PAIR shows "non-final action mailed."  Yet, the actual form on the IFW is PTOL-324, which is a "Notice of Non-Compliant Amendment (37 CFR 1.121."  Two month deadline.

I thought about calling the SPE, but the SPE signed off on the notice as well, but that may have been just pro forma.  The main problem is that I am currently 12 hours out of sync with EDT.
« Last Edit: 07-05-17 at 08:16 pm by Mord »
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Mord

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Re: non-compliant response question
« Reply #5 on: 07-05-17 at 08:04 pm »

After submitting an extensive response to a first office action with claim amendments, another non-final was received rejecting ALL claim amendments as being outside the elected invention (form PTOL-324).  Item 4E was the only checked category which referred to an additional page which contained a two-sentence statement.  "Continuation of 4(e) Other: Claims 1-119 are directed to an invention distinct from and independent from and independent of the invention previously claimed.  As such, the amended claims are drawn to a non-elected invention which renders the response non-responsive."
...
No rule, law, or procedure was cited.  As mentioned above, many claims were cancelled, but their elements were retained in other amended claims. 

This is called "election by original presentation." Described in MPEP 821

It was clear from the first OA that the examiner understood the invention poorly, if at all.  the amended claimset was presented to state the invention more clearly.

Sounds like a good reason to rewrite claims. But is also way more likely to run into election-by-original-presentation.

If I'm making extensive amendments that I worry about creeping into "another invention" territory, I usually also keep a claim with only minor amendments in there too. Doesn't keep the Examiner from cancelling your extensively amended claims, but the idea is the Examiner will keep the less-amended claims pending, so at least you have some claims being examined.

I am planning on responding with a detailed analysis of the amended claims and demonstrating that each element of the amended claims came from the collective elements of the elected claimset.  I would expect the examiner to retain that rejection and issue a final.

Note that this approach will create a lot of prosecution history that will give a challenger in litigation a lot of ammunition in arguing claim scope. Your client may not like that.

If you're going that route, and you really do expect the Examiner to maintain the rejection, consider filing a petition to traverse the forced election. Election-by-original-presentation is essentially a specific variety of restriction practice, only the Examiner elects and not the Applicant.

However, given that I have never seen such totally unjustified and arbitrary actions from the patent office, is there anything I can do to force the examiner to say exactly what he believes how the boundaries of the elected invention have been exceeded? 

Surely you know you can't force an Examiner to do anything :-) Seriously, no, there's no magic words or actions that will force an Examiner to explain himself. The law isn't much help either -- the notice requirement of 132 allows the Examiner to provide only a rudimentary explanation of any rejection.

Though I suppose this isn't a rejection, so maybe 132 doesn't even apply.

A cynical person would tell you there's no way the Examiner is going to explain his action in detail, that would be as much work as writing a rejection in the first place, which he avoided by cancelling your claims.

I have thought about taking the amended claimset and making those claims all dependent on the various original independent claims.

I'm not an expert on restriction practice, but I don't think that helps.

Most claims were amended.  Many claims were cancelled after their elements were incorporated into other fewer claims.  Upon review, again, all the subject matter contained in the amended claimset existed in the claimset of the elected invention as specified by the examiner.  thus no new matter has been introduced, not from outside the specification, or outside the invention elected.

I get what you're saying, but wanted to caution you that "new matter" has a precise meaning in patent law, and it isn't the right term to use here. The Examiner hasn't said your claims strayed from the spec, but instead has told you that your new claims strayed too far from the original claims, so as to constitute a different invention from the one originally presented.

Thanks for your comments.  I am currently digesting them.  Also, I am familiar with 821.03 and 37 CFR 1.145.  (neither were cited in the PTOL-324 form.)

I really did not think I can get the examiner to explain himself, but I am accustomed to more helpful office actions.  So far the two problems mentioned in my first posting (a total rejection of all claims, even cancelled ones) plus back-dating an alleged office action are unique in my experience as well as with those who I have consulted.

the question then arises about the definition of an invention.  I am going on the exact wording of what is in the claimset of that elected invention.  What I sense is that there is another level, perhaps more nebulous, that one has to consider. 
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Mord

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Re: non-compliant response question
« Reply #6 on: 07-05-17 at 08:42 pm »

One thing I'm not so clear on - did you get a notice of non-compliant response (normally having a 1-month deadline for reply) or did you get an actual office action (normally a 3-month deadline for reply)?

Yeah, I wondered about that too. The OP specified "PTOL-324," and the MPEP says this is a form used for non-compliant response.

That's a good thing, gives the OP a chance to reconsider his strategy.

When you amended the claims using subject matter only from other dependent claims in the same set of elected claims, did you do so on a direct dependency basis?  What I mean is, if you amended claim 1 to contain the subject matter of claim 7, did claim 7 originally depend directly from claim 1?  I'm thinking it is possible, although maybe not too likely, to go outside the scope of the original election if you amend in ways that don't follow the original dependencies.

Something like
ORGINAL
Independent 1 = feature X + A
Dep 1.1 = X+B
Independent 2 = feature Y + A
Dep 2.1 = Y+C

NEW/AMENDED
Independent = Y+B.

So all features were present somewhere in the original set of claims, but the particular combination Y+B was not. 

Is that what you're asking about?

I've run across something similar in the context of an After Final amendment. That is, an Examiner refuses to enter a claim to Y+C without an RCE. "Requires a new search," saying the particular combination Y+C had not yet been searched.

thanks for your comments!

there were originally 3 independents, and many dependents.
two independents were modified like this:
Original claim 1: elements A B C
dependent claim 2 + D
dependent claim 3 + E
amended claim = elements A B C D E
claims 2 and 3 cancelled

the remaining independent method claim was modified like this:
original claim: elements X Y
dependent claim from another dependency:element Q
amended independent: elements X Y Q

also, I should add that beauregard claims were newly added based on two independent method claims.

« Last Edit: 07-05-17 at 08:45 pm by Mord »
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still_learnin

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Re: non-compliant response question
« Reply #7 on: 07-06-17 at 10:13 am »

I really did not think I can get the examiner to explain himself, but I am accustomed to more helpful office actions.  So far the two problems mentioned in my first posting (a total rejection of all claims, even cancelled ones) plus back-dating an alleged office action are unique in my experience as well as with those who I have consulted.

So the claims you cancelled were indicated as pending yet rejected in the Office Action? That sounds like a simple error on the Examiner's part. You could always call the Examiner to clarify this.

Also, I am familiar with 821.03 and 37 CFR 1.145.  (neither were cited in the PTOL-324 form.)

Well, the form itself is a generic one for non-compliant amendments, that's why the boilerplate on the form itself doesn't mention these.

Sure, would have been nice if the Examiner had cited authority for his action, but his statement "invention distinct from and independent ... invention previously claimed" probably does put you on notice that he's electing by original presentation.

...the question then arises about the definition of an invention.  I am going on the exact wording of what is in the claimset of that elected invention.  What I sense is that there is another level, perhaps more nebulous, that one has to consider.

Possibly. Claim construction under Broadest Reasonable Interpretation should be considered, even in analyzing restrictions.

So if your amendments changed some terms, even minor ones -- "disposed on" to "disposed at" -- then I can see a zealous Examiner maybe viewing this as a shift to a new invention. But you didn't, you kept the terms the same, so doesn't seem to be an issue of claim construction.
« Last Edit: 07-06-17 at 10:43 am by still_learnin »
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still_learnin

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Re: non-compliant response question
« Reply #8 on: 07-06-17 at 10:41 am »

there were originally 3 independents, and many dependents.
two independents were modified like this:
Original claim 1: elements A B C
dependent claim 2 + D
dependent claim 3 + E
amended claim = elements A B C D E
claims 2 and 3 cancelled

So all you did for this independent was "roll up" two dependent claims into their parent. Nothing weird about that. I can't see how that would have resulted in a different invention. So ignoring for now the other amendments (which are slightly more complicated), I'd suggest a phone call to the Examiner to see what's going on.

I wouldn't get too formal, discuss restriction case law or regs, or go into lots of detail (i.e. "demonstrating that each element of the amended claims came from the collective elements of the elected claimset").

And because it had the most straightforward amendment, I'd start with the amended claim A B C D E. I'd make these simple points:
  • My first amendment merely rolled up two dependents into their parent independent
  • So it doesn't make sense to me that this could result in a different invention ... it's not even a different subcombination
  • Also, you searched these two dependents in the original Office Action
  • So it doesn't make sense to me that it's a 'serious burden' to search/examine the new claim
  • Thus, how could you have cancelled this claim as non-elected?

See what the Examiner says, and go from there.

Quote
I really did not think I can get the examiner to explain himself, but I am accustomed to more helpful office actions.
I find Office Actions and Examiners are all over the map. Some helpful, some not. I feel your pain: it's certainly frustrating when you can't figure out what's going on in an Office Action.
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Mord

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Re: non-compliant response question
« Reply #9 on: 07-06-17 at 07:56 pm »

there were originally 3 independents, and many dependents.
two independents were modified like this:
Original claim 1: elements A B C
dependent claim 2 + D
dependent claim 3 + E
amended claim = elements A B C D E
claims 2 and 3 cancelled

So all you did for this independent was "roll up" two dependent claims into their parent. Nothing weird about that. I can't see how that would have resulted in a different invention. So ignoring for now the other amendments (which are slightly more complicated), I'd suggest a phone call to the Examiner to see what's going on.

I wouldn't get too formal, discuss restriction case law or regs, or go into lots of detail (i.e. "demonstrating that each element of the amended claims came from the collective elements of the elected claimset").

And because it had the most straightforward amendment, I'd start with the amended claim A B C D E. I'd make these simple points:
  • My first amendment merely rolled up two dependents into their parent independent
  • So it doesn't make sense to me that this could result in a different invention ... it's not even a different subcombination
  • Also, you searched these two dependents in the original Office Action
  • So it doesn't make sense to me that it's a 'serious burden' to search/examine the new claim
  • Thus, how could you have cancelled this claim as non-elected?

See what the Examiner says, and go from there.

Quote
I really did not think I can get the examiner to explain himself, but I am accustomed to more helpful office actions.
I find Office Actions and Examiners are all over the map. Some helpful, some not. I feel your pain: it's certainly frustrating when you can't figure out what's going on in an Office Action.

thank you very, very much for your useful comments!

to answer your previous question about the amendments, Claims 2 and 3 were cancelled by me after their content was incorporated into claim 1 and these cancelled claims were then cited by the examiner (with all the other cancelled and currently amended claims) as covering a new invention.

I have suspected from the beginning the examiner has not bothered to read either the specification or my response to the first OA.  In the spec, I specifically define terms which are not used in the art, mainly because they are not part of the art.  There is an overall control on a procedure and lots of subsidiary controls under that overall control.  the wording in the spec is quite clear as to what happens, and there are lots of figures demonstrating the relationship.  Yet the examiner ignored (i.e., did not read) the definition of the relationship, assumed that the subsidiary controls were at the same level as the overall control and rejected it on the prior art.  This is what the amended claims sought to clarify.  the amendments incorporated the aforesaid correct relationship explicitly.  so if the examiner maintains his original and false impression then I can see how he would say it is a different invention. 

I will definitely call either the spe or the examiner.  It appears that you suggest that I at least start with the examiner.  Correct??

Thanks again for your advice and patience!
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still_learnin

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Re: non-compliant response question
« Reply #10 on: 07-07-17 at 11:00 am »

I will definitely call either the spe or the examiner.  It appears that you suggest that I at least start with the examiner.  Correct??

Meaning call the Examiner first, rather than the SPE? I don't have an opinion on that, maybe someone else will. I meant call the Examiner first before you draft a response.

... Claims 2 and 3 were cancelled by me after their content was incorporated into claim 1 and these cancelled claims were then cited by the examiner (with all the other cancelled and currently amended claims) as covering a new invention.

Like I said, the inclusion of cancelled claims in any sort of rejection/objection/restriction is almost always a simple error on the Examiner's part.

I have suspected from the beginning the examiner has not bothered to read either the specification or my response to the first OA.  In the spec, I specifically define terms which are not used in the art, mainly because they are not part of the art.

Are you certain that your spec actually defines terms? That's not common. If you include the usual clauses  -- "in some embodiments," "for example," "not limited to" -- that's not considered a definition.

  There is an overall control on a procedure and lots of subsidiary controls under that overall control.  the wording in the spec is quite clear as to what happens, and there are lots of figures demonstrating the relationship. 

You're almost certainly interpreting the claims more broadly than the Examiner, and maybe more broadly than is proper under Broadest Reasonable Interpretation. When prosecuting, it's very important that your understanding of the claims isn't too colored by the spec and drawings. There's a whole section in the MPEP about this:
2111.01    Plain Meaning
II.   IT IS IMPROPER TO IMPORT CLAIM LIMITATIONS FROM THE SPECIFICATION

Even if, in your specific situation -- given the totality of the spec, drawings, and claims -- it is proper to narrow claim terms, know that you're going to have a hard time convincing the Examiner of this.

This is what the amended claims sought to clarify.  the amendments incorporated the aforesaid correct relationship explicitly. 

That's usually the right approach: don't argue limitations that are outside the claims; instead, put those limitations in the claims.

so if the examiner maintains his original and false impression then I can see how he would say it is a different invention. 

This is also a key in prosecution ... working hard to understand the Examiner's point of view.
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still_learnin

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Re: non-compliant response question
« Reply #11 on: 07-07-17 at 11:32 am »

ORGINAL
Independent 1 = feature X + A
Dep 1.1 = X+B
Independent 2 = feature Y + A
Dep 2.1 = Y+C

NEW/AMENDED
Independent = Y+B.

So all features were present somewhere in the original set of claims, but the particular combination Y+B was not. 

Is that what you're asking about?
there were originally 3 independents, and many dependents.
two independents were modified like this:
Original claim 1: elements A B C
dependent claim 2 + D
dependent claim 3 + E
amended claim = elements A B C D E
claims 2 and 3 cancelled

There is an overall control on a procedure and lots of subsidiary controls under that overall control.  the wording in the spec is quite clear as to what happens, and there are lots of figures demonstrating the relationship. Yet the examiner ignored (i.e., did not read) the definition of the relationship, assumed that the subsidiary controls were at the same level as the overall control and rejected it on the prior art. 

Sounds like your amendment wasn't quite as simple as rolling up dependent claim features D and E into independent A+B+C.

Sounds like it was more like
Original Independent: A widget comprising: a fastener having a shaft and a head;
Original Dependent: The widget further comprising a nut.
Amended Independent: A widget comprising: a fastener having a shaft and a head and a nut;

Which would mean that all the same components are present, but the claim scope has changed[/b][/i]. Note that the original independent could read on either
Quote
A.X + A.Y + Z
or
Quote
A.X + A.Y + A.Z
whereas the amended claim reads only on the second.
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