What is the significance of a first Office action in rejecting previously allowed claims?
The significance of a first Office action in rejecting previously allowed claims lies in its timing and implications. According to MPEP 706.04:
“A rejection should not be made in an application unless the claims therein are clearly anticipated or clearly unpatentable. A first Office action in any application, whether a new or substitute application, should be a clear action. However, 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 an examiner can reject a previously allowed claim in a first Office action of a continuation or divisional application if they determine it to be unpatentable. This highlights the importance of thorough examination in each stage of the patent process, even for claims that were previously considered allowable.
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