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2305.01 Action To Be Made at Time of Suggesting Claims - 2300 Interference Proceedings
2305.01 Action To Be Made at Time of Suggesting Claims
At the same time that the claims are suggested, an action is made on each of the applications that are up for action by the examiner, whether they be new or amended applications. In this way, possible motions under 37 CFR 1.633(c) and (d) may be forestalled. That is, the action on the new or amended application may bring to light patentable claims that should be included as corresponding to the count, or as forming the basis for an additional count, of the interference, and, on the other hand, the rejection of unpatentable claims will serve to indicate to the opposing parties the position of the examiner with respect to such claims.
When an examiner suggests that an applicant present a claim for interference, the examiner should state which of the claims already in the application are, in his or her opinion, unpatentable over the claim suggested. This statement does not constitute a formal rejection of the claims, but if the applicant presents the suggested claim but disagrees with the examiner's statement, the applicant should so state on the record, not later than the time the claim is presented. In re Bandel, 348 F.2d 563, 146 USPQ 389 (CCPA 1965). If the applicant does not present the suggested claim by the expiration of the period fixed for its presentation, the examiner should then reject those claims which were previously stated as being unpatentable over the suggested claim on the basis that the failure to present constituted a concession that the subject matter of those claims is the prior invention of another in this country under 35 U.S.C. 102(g) and thus prior art to the applicant under 35 U.S.C. 103. In re Oguie, 517 F.2d 1382, 186 USPQ 227 (CCPA 1975). If the applicant does present the suggested claim, when the interference is declared, the claims stated to be unpatentable over the suggested claim will be designated as corresponding to the count.
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