Can the grounds for rejecting claims in an application be different from those applicable to the corresponding patent claims?
Yes, the grounds for rejecting claims in an application can be different from those applicable to the corresponding patent claims. According to MPEP 706.06:
“The ground of rejection of the claims presented in the application may or may not be one which would also be applicable to the corresponding claims in the patent.”
This means that examiners should evaluate the claims in the application independently, considering all possible grounds for rejection, even if those grounds might not apply to the original patent claims.
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