What happens to unamended patent claims in reexamination after a Board decision?
The treatment of unamended patent claims in reexamination after a Board decision depends on whether the claim is rejected or allowed. If an unamended patent claim is rejected and the Board affirms the rejection, the claim will be canceled. However, dependent claims based on the rejected unamended patent claim may still be confirmed or deemed patentable.
The MPEP provides an example:
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.
This example illustrates that even when an unamended patent claim is rejected and canceled, its dependent claims can still be preserved if they contain allowable subject matter.
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