What is the examiner’s responsibility when claims corresponding to a patent are presented in an application?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-10 10 Rules 5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. When claims corresponding to claims of a patent are presented in an application, the examiner has the responsibility to: Determine whether the presented claims are unpatentable on any grounds, including under 35 U.S.C. 101 , 102 , 103 , 112 , double patenting, etc. Reject any claims that are rejectable on any grounds. As stated in MPEP 706.06 : “If any of the claims presented in the application are rejectable on any grounds, they should be so rejected.” Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Claim Rejection Standard Must Be Preponderance of Evidence MPEP 706 Examiner Must Determine Unpatentability of Claims MPEP 706.06 Required Claims Must Be Rejected If Rejectable MPEP 706.06 Recommended Ground of Rejection May Not Apply to Patent Claims MPEP 706.06 Prohibited Claim Must Be Unpatentable to Reject MPEP 706 Recommended Office Action Including Rejection Requires Director's Approval When Applicable to Patent Claims MPEP 706.06 Required Rejection Grounds Not Applicable to Patent Claims MPEP 706.06 Prior Art Search for Claims MPEP 706 Review Claims with Prior Art MPEP 706 Recommended Examiner Must Clearly Articulate Rejections Early MPEP 706 Other Related FAQs 5 FAQs Collapse When is Technology Center Director approval required for rejecting claims copied from a patent? Can the grounds for rejecting claims in an application be different from those applicable to the corresponding patent claims? What are the potential grounds for rejecting claims copied from a patent? What guidance does MPEP 706.06 provide for interferences and derivation proceedings? How does the USPTO handle IDSs in Requests for Continued Examination (RCE)?