Legal Question in Intellectual Property in California

I am applying for a patent and received a final rejection letter. Under "Allowable Subject Matter," the examiner wrote the following: "Claim 23 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims." Claim 23 is currently dependent on claim 20. I also have another independent claim, Claim 10, which is broader (and therefore more desirable to obtain) than claim 20. Can I rewrite claim 10 to include all the elements of claim 23 to arrive at a valid independent claim? Or will I only have a valid claim if I rewrite claim 20 to include all the elements of claim 23?


Asked on 6/21/12, 3:49 pm

2 Answers from Attorneys
Patrick Tracy Patrick J. Tracy, Esq, P.E.,

This is not a question for a bulletin board. Much of this depends on the technical subject matter of the claim. Seek a patent attorney or agent in your area to assist you.

Patrick Tracy

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Answered on 6/21/12, 4:03 pm
Bryan Whipple Bryan R. R. Whipple, Attorney at Law

Although I don't practice patent law, I'd guess from experiences with trademark examiners that rewriting any claim that's presently unobjectionable may render it objectionable, particularly if you are grafting objectionable material from another (objectionable) claim, dependent or independent. I'd go back to the rejected base claim and try to eliminate anything that stems from or relies upon its objectionable aspect(s). The assistance of a lawyer with enough prior patent-application experience to read between the lines and figure out exactly what is bothering the examiner, and to eliminate it from the entire application, would be invaluable here.

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Answered on 6/21/12, 4:11 pm


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