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?


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

  • 2
    But do not use the claim status "currently amended" on a dependent claim unless the text of that claim is being altered.
    – George White
    Jul 16 '19 at 22:12

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