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Author Topic: 103 rejection based on parent application with valid priority claim  (Read 229 times)

Retarius

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I have a 2nd office action where claim 1 was rejected on 3 references, one of which is a parent application with a valid priority claim.

The present application is a CIP, and the claim limitations that were not in the parent are rejected on the other 2 references.
The examiner is maintaining that because the present application is a CIP rather than a CON, the filing date of claim 1 is treated as the filing date of the present application - and therefore it is ok to reject limitations based on the parent application.

My question is if the examiner's reasoning is correct here and I need to amend or argue based on the other 2 references? That doesn't seem correct to me - I would think that he still can't properly reject common limitations with the parent. FYI - both apps have the same inventor and are assigned to the same entity.
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bluerogue

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What you posted is missing an important fact.  Are those extra limitations supported by the parent's original disclosure or is new matter added in the CIP?  If the former, then the examiner is wrong, if the latter, claim 1 is not entitled to the priority date of the parent and the examiner is correct.  Note I am talking about the original specification and not the original claims of the parent.
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The views expressed are my own and do not represent those of the USPTO. I am also not your lawyer nor providing legal advice.

JV

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The examiner is maintaining that because the present application is a CIP rather than a CON, the filing date of claim 1 is treated as the filing date of the present application - and therefore it is ok to reject limitations based on the parent application.
Are you sure that this is what the examiner is saying?  In a CIP application, priority date is evaluated on a claim-by claim basis.  So if a claim relies on matter that is not in the parent application, it only gets the benefit of the CIP filing date.  So the examiner is correct, but not for the reason that he/she gave.

I don't often do CIPs, but when I do I try very hard to make the independent claims not rely on any of the new matter.  That avoids the parent application (which has usually published by the filing date of the CIP) from being prior art.  It does bring about the potentially interesting result that a dependent claim (which includes limitations supported by the new matter) has a later priority date than the parent independent claim, so you could have a valid independent with invalid dependents.
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