Greg Aharonson, in the popular PatNews news letter asks the following:
A QUESTION ON DEPENDENT CLAIMS’ (NON)OBVIOUSNESS
It is commonly said that the obviousness of dependent claims rise or fall based on the obviousness of independent claims, to some extent. I am trying to find a formal statement of this. I couldn’t find anything in MPEP. The best I could find was some language from CAFC decisions, which I tried to unify:
Dependent claims stand or fall with independent claims where the
merits of dependent claims, or lack thereof, are not argued
independently of the merits of the independent claims.
In re Dance, 160 F.3d 1339, 1340 n.2 (Fed. Cir. 1998)
Is there a better way of formally stating this, or some classic caselaw, or something clearly stated in MPEP?
I am not an expert in US prosecution, but there is an interesting Israel case fo relevance to this:
The deputy Commissioner of Patents in Israel, Noach Shalov Shmulovich ruled this to be the case in an Israel case that went to Appeal: Girraffa vs. Melnick. He stated clearly that where independent claims are voided, ther dependent claims fall automatically. There is actually some logic to this, since in Israel, the examiners usually only examine the independent claims anyway.
I queried the issue with the Israel Commissioner of Patents, Dr. Meir Noam, who told me that is was his policy NOT to comment on issued rulings, and then I brought it up with the Deputy Commissioner himself at a recent meeting of the AIPPI, he admitted simply that he’d made a mistake (not that it affects the verdict in Melnicke).
Prior to this, one of my colleagues tongue-in-cheek asked me if he could be charged with malpractice by not recasting all dependent claims in independent form prior to issuance. The answer is that we can and sometimes are charged with malpractice in the strangest of circumstances, however, I am not going to start recasting all my claims into independent form, and don’t expect anyone else to either!
Generally, in the US, The Examiner at the USPTO examines the dependent claims separately, and cites prior art thereagainst. The problem is where one only argues that the independent claim is patentable and the dependent claims are patentable at least in view of their depending on an independent claim that is itself patentable, which is a common tactic. In such a case, once the independent claim is knocked out, the assumption of validity is no longer there. That DOES NOT mean that the dependent claims all fall however.
It is therefore preferable to answer the issues of novelty and inventive step in dependent claims head on if the examiner raises prior art objections against the dependent claims.
