What happens when the Board affirms the examiner’s rejection but reverses rejections on dependent claims?
When the Board affirms a rejection against independent claims but reverses all rejections against dependent claims, the examiner has two options after the period for further appeal expires:
- Convert the dependent claims into independent form by examiner’s amendment, cancel all claims with affirmed rejections, and issue the application.
- Set a 2-month time limit for the appellant to rewrite the dependent claims in independent form. If no timely reply is received, the application is abandoned because no claims stand allowed.
As stated in the MPEP: The Patent Trial Appeal Board affirmed the rejection(s) against independent claim(s) [1], but reversed all rejections against claim(s) [2] dependent thereon. There are no allowed claims in the application. The independent claim(s) is/are cancelled by the examiner in accordance with MPEP § 1214.06.
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