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If the Board affirms a rejection against independent claim 1, reverses all rejections against dependent claim 2 and claim 3 is allowed, after expiration of the period for further appeal, what should the examiner do?
If the Board affirms a rejection against independent claim 1, reverses all rejections against dependent claim 2 and claim 3 is allowed, after expiration of the period for further appeal, the examiner should either:
- Convert dependent claim 2 into independent form by examiner’s amendment, cancel claim 1 in which the rejection was affirmed, and issue the application or ex parte reexamination certificate with claims 2 and 3; or
- Set a 2-month time limit in which appellant may rewrite dependent claim 2 in independent form.
- Extensions of time under 37 CFR 1.136(a) are available.
- If the reply and any necessary extension of time fee are not received before the expiration of the maximum six-month time period set by statute, the examiner will cancel claims 1 and 2 and issue the application with allowed claim 3 only.
The answer to this question can be found in chapter 1200 of the MPEP. This chapter covers Appeal.
The answer is from the 9th Edition, Revision 10.2019. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
This question and answer come from section 1214.06 of the MPEP. The following is a brief summary of section 1214.06.
1214.06 Examiner Sustained in Whole or in Part; Claims Require Action
This section covers instances where the examiner is sustained in whole or in part. It covers instances where no claims stand allowed, when claims do stand allowed, and when claims require an action.