How does the USPTO handle rejoinder of withdrawn claims in Markush applications?
The USPTO has specific guidelines for handling the rejoinder of withdrawn claims in Markush applications. According to MPEP 803.02:
“If a Markush claim is finally rejected, the subject matter of the rejected claim may be rejoined with the elected invention if the rejected claim is amended to include the limitations of the elected invention. The rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112.”
This means that if a Markush claim is rejected but can be amended to include the allowable subject matter of the elected species, the previously withdrawn claims may be rejoined and considered for allowance. However, these rejoined claims must still meet all patentability criteria, including novelty, non-obviousness, and proper written description.
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