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Amendments By Canellation and Introduction of New Claims
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Author:  watari_pg [ 2014-09-14 13:02:53 ]
Post subject:  Amendments By Canellation and Introduction of New Claims

Recently, in a Preliminary Amendment accompanying an RCE, due to some difficulty that I perceived in making a number of amendments to the claims, I opted to cancel all of the existing claims and submit a new set of claims that incorporated the amendments. Of course I labeled everything with the right status indicators in accordance with PTO practice.

The Examiner objected the claims, stating that this manner of amendment was essentially "illegal" in my case. In the Examiner's view, the amendments were of a "relatively minor" character (his words), and therefore, I was REQUIRED (citing MPEP 714.C and 37 CFR 1.121) to make the amendments by the traditional underlining and strike-through method and indicating the claims as (currently amended).

I looked very closely at MPEP 714 etc., and I could find nothing that indicated that if the amendments were "minor" they could not be made by cancellation and introduction of new claims, and thus the Examiner's REQUIREMENT does not seem to be justified. Based on my judgment, the amendments were sufficiently problematic to be made by underlining/strike-through, and it was easier to make them in the way that I did. I can see nothing that says that what I did was illegal or not allowed by the USPTO.

I don't want to make this Examiner angry by telling him he is simply wrong and there is no basis for his claim objection, so I am thinking of just doing it the way that he wants, but then again, since the amendments have already been entered and considered, it seems silly to do that now, and I am not even sure if one could "undo" (except by removing the new claims and trying to _reinstate_ the canceled, i.e. old, claims, as there is no procedure for doing this).

I think the Examiner should live with the way things are now, and indeed he has already issued and office action in which he considered the claims as they are, so what is he really complaining about? How can/should I respond to the claim objection?

Thanks for you comments!

Author:  khazzah [ 2014-09-16 10:55:30 ]
Post subject:  Re: Amendments By Canellation and Introduction of New Claims

I agree that the Examiner has no legal basis for his claim objection. But in general, it's tougher to fight these sorts of issues than it is to give in. Objections in particular are a big pain, since they have to be addressed by petition, not by appeal.

For that reason, I usually do whatever silly thing the Examiner wants as long as it doesn't affect claim scope.

You're also right that, because the claims were cancelled, the rules don't permit the Examiner to get what he wants: claims as previously presented but with the addition of strikethru/underline. Which makes his objection all the more silly.

In this case, I suggest calling the Examiner to discuss. Tell him something along the lines of:
    you understand that he wants to see changes to the claims in a response
    but in this particular case, strikethru/underline would make the amendment really hard to see, so you chose to cancel/new instead
    you'd love to make him happy now, but don't see a procedural way to accomplish this since you can't reinstate old claims
    what does he suggest?
Then do whatever he suggests (assuming it doesn't affect claim scope).

If you don't like this suggestion, here are the other options that I see:

Last, make a note to yourself about this Examiner's pet peeve, so you'll know not do do this the next time you work on one of his cases. Might even tell your colleagues about this Examiner's picky requirement.

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