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« A Complete Diploid Human Genome Reveals Some Surprises | Main | An Analysis of the New Rules: 37 C.F.R. § 1.114: RCE Practice »

September 04, 2007


Rule 75(b) prevents one from taking allowed dependent claims.

For example, to avoid filing and ESD and to be considerate of the over burdened PTO, an applicant files an original application with only 3 independent claims and 17 dependent claims which depend directly from respective ones of the independent claims.

After a few turns of the crank all of the dependent claims are allowable, but the 3 independent claims are finally rejected.

To avoid appeal, the applicant is willing to accept the 17 allowable claims and files an amendment to place all 17 claim in independent form.

But no! Rule 75(b) forbids more than 5 independent claims, since no ESD was filed before the first office action!

How is this fair? How is this an improvement? How does this lead to "clarity"? How does the inventor get the protection to which even the Examiner believes he is entitled?

Can anyone clarify 1.75(b for the following situation? The application was filed before 11/1/07, the number of claims exceeds the 5/25 limit, a first office action on the merits HAS been issued, and no ESD has been filed (could be a very common situation). Will the Office send out a 1.75(b)(3) notice? If so, will the fact that the FAOM has been issued count as an "inadvertent" reason for not filing an ESD? If no notice, does the applicant have any affirmative duty?


According to 72 Fed. Reg. 46,716, if a first Office action on the merits has been issued, Rule 75 does not apply. Therefore, there is no need to file an ESD.


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