Can an examiner reject a claim that was allowed in a parent application?

Yes, an examiner can reject a claim that was allowed in a parent application. The MPEP 706.04 states:

“Where the examiner determines that a claim that was previously allowed is unpatentable, the claim may be rejected in the next Office action, whether that action is a first or subsequent action on a continuation or divisional application.”

This means that even if a claim was allowed in a parent application, it can still be rejected in a continuation or divisional application if the examiner finds it to be unpatentable. This could happen due to various reasons, such as:

  • Discovery of new prior art
  • Reconsideration of previously cited art
  • Changes in patent law or examination guidelines
  • Errors in the previous examination

It’s important for applicants to understand that allowance in a parent application does not guarantee allowance in subsequent related applications.

To learn more:

Tags: continuation application, Divisional application, parent application