How are dependent claims treated after a Board decision in reexamination?
The treatment of dependent claims after a Board decision in reexamination depends on the status of the independent claim and whether the claims were amended:
- If a rejected amended independent claim has a dependent claim that was previously objected to as being allowable except for its dependency, both claims will be canceled.
- If an unamended patent claim is rejected but its dependent claim (amended or unamended) is found allowable, the dependent claim will be confirmed or deemed patentable.
The MPEP provides specific examples:
Example 1: Amended claim 1 is rejected in the examiner’s answer and claim 2 was objected to prior to appeal as being allowable except for its dependency from amended claim 1. If the Board affirms a rejection of amended patent claim 1, the examiner should prepare a “Notice of Intent to Issue Ex Parte Reexamination Certificate” (NIRC) indicating that claims 1 and 2 are canceled.
Example 3: Unamended patent claim 1 is rejected in the examiner’s answer, claim 2 was objected to prior to appeal as being allowable except for its dependency from unamended patent claim 1 and independent claim 3 was allowed prior to the appeal. Dependent claim 2 may be either unamended or amended. If the Board affirms a rejection of unamended patent claim 1, the examiner should issue the NIRC with claim 1 as canceled and claims 2 and 3 as confirmed or patentable.
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