Is amending an independent claim in an amendment fully responsive to dependent claim rejections?


As in the title, if an examiner rejects claims 1 and 2, with claim 2 being dependent on claim 1, would amending only claim 1 be fully responsive to the office action?

For example,

Claim 1: A Z comprising of Y | Rejected for being anticipated Z comprised of Y.

Claim 2: A Z according to claim 1, further comprising X | Rejected for being anticipated Z comprised of Y and X.

Would amending claim 1 to read: "A Z comprising of Y and W" be sufficient to respond to the office action?


Posted 2019-07-16T16:29:02.383

Reputation: 11



Yes, claim 2 is dependent on claim 1 meaning it contains all limitations of claim 1 and was therefore also amended by W.


Posted 2019-07-16T16:29:02.383

Reputation: 5 637

2But do not use the claim status "currently amended" on a dependent claim unless the text of that claim is being altered. – George White – 2019-07-16T22:12:34.267