Suppose an application is filed in the US with the following claim:
- A widget comprising X and Y.
And the Inventor has another co-pending application claiming the same widget, but with X and Y recited in separate dependent claims like so:
- A widget.
- The widget of claim 1, further comprising X.
- The widget of claim 1, further comprising Y.
Could the examiner properly reject claim 1 of the first application using “claims 2 and 3” of the co-pending application, i.e., with no other outside secondary reference? My gut instinct is no, because the co-pending application does not recite the subject matter of the first application in a single claim, but I can’t find anything in the MPEP to support this and I see these kinds of rejections being made by examiners left and right.