What happens if rejoined claims are found unpatentable after rejoinder?
If rejoined claims are found unpatentable after rejoinder, the examiner will take appropriate action based on the patentability determination. The MPEP 821.04 provides guidance on this situation:
“Rejoined claims must be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112.”
If the rejoined claims are found unpatentable:
- The examiner will issue a new Office action addressing the patentability issues.
- The applicant will have the opportunity to respond and amend the claims to overcome the rejections.
- If the rejections cannot be overcome, the unpatentable claims may be canceled or ultimately rejected.
- The allowable claims can still proceed to issuance, provided they meet all other requirements.
It’s important to note that the rejoinder does not guarantee the patentability of the rejoined claims, and they are subject to the same scrutiny as any other claims in the application.
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