Partial response to rejection

[w***@aol.com]

I have received a rejection on a set of claims, say one independent
and two dependent claims of that parent claim.

Is it possible to file a partial response, i.e. initially respond to
the rejections for the two dependent claims, and deal with the
independent claim separately later?

Thank you in advance ...

[elektros]

Post by w***@aol.com
I have received a rejection on a set of claims, say one independent
and two dependent claims of that parent claim.
Is it possible to file a partial response, i.e. initially respond to
the rejections for the two dependent claims, and deal with the
independent claim separately later?
Thank you in advance ...

If you do, you will get a Notice of Non-Compliant Amendment, and I
believe they will give you one month to respond to that. You aren't
supposed to do this deliberately, either.

[Steve Marcus]

Post by w***@aol.com
I have received a rejection on a set of claims, say one independent
and two dependent claims of that parent claim.
Is it possible to file a partial response, i.e. initially respond to
the rejections for the two dependent claims, and deal with the
independent claim separately later?
Thank you in advance ...

No. Particularly where you intentionally fail to file a complete response.

See 37 CFR 1.111(a)(1) and (2), and also 37 CFR 1.135(c)

Steve

[w***@aol.com]

Post by w***@aol.com
I have received a rejection on a set of claims, say one independent
and two dependent claims of that parent claim.
Is it possible to file a partial response, i.e. initially respond to
the rejections for the two dependent claims, and deal with the
independent claim separately later?
Thank you in advance ...

Thank you both elektros and Steve for your responses. Here is the
situation:

The original claim(s), independent claim (IC), were constructed as IC
(A) where A is a given attribute. In formulating to overcome the
rejection we narrowed our choices to two sets of arguments, and
decided to go with one choice at that time. That required that we
amend the claim to include another attribute (B) to the IC so it
becomes IC (A + B). This one didn't work.

I would like to present the other argument but that was based on IC
(A) so it would require amending the claim back to what it was before
IC (A + B). Is it complaint with the regulations to revert the claim
one step back to IC (A), and present a fresh argument? Can you note
that in the request for amendment to set the stage and avoid
confusions and misunderstandings?

[Steve Marcus]

Post by w***@aol.com
I have received a rejection on a set of claims, say one independent
and two dependent claims of that parent claim.
Is it possible to file a partial response, i.e. initially respond to
the rejections for the two dependent claims, and deal with the
independent claim separately later?
Thank you in advance ...

Thank you both elektros and Steve for your responses. Here is the
situation:

The original claim(s), independent claim (IC), were constructed as IC
(A) where A is a given attribute. In formulating to overcome the
rejection we narrowed our choices to two sets of arguments, and
decided to go with one choice at that time. That required that we
amend the claim to include another attribute (B) to the IC so it
becomes IC (A + B). This one didn't work.

I would like to present the other argument but that was based on IC
(A) so it would require amending the claim back to what it was before
IC (A + B). Is it complaint with the regulations to revert the claim
one step back to IC (A), and present a fresh argument? Can you note
that in the request for amendment to set the stage and avoid
confusions and misunderstandings?
+++++++++++++

Reply: If you have already responded to the rejection and have not yet
received another action, you have the problem of the regulations that I
listed in my prior response. But if you have received another Office
action, you can respond as you wish, subject to my next paragraph..

Of course, if you received "another Office action" and that action was a
final rejection, entry of whatever response that you file is governed by 37
CFR 113 and 37 CFR 116, and entry of your response is not a matter of right.
A response to a final rejection is only entered if it complies with 37 CFR
116. If, however, you received an Office action after your response to the
prior Office action, and it was not a final rejection, then you can file a
response which will be entered as a matter of right, provided it is a
complete response per 37 CFR 1.135.

Steve