Comments on: A Few Reasons To Consider Including A Listing Of Claims In Every Response To An Office Action http://patentablydefined.com/2008/08/08/a-few-reasons-to-consider-including-a-listing-of-claims-in-every-response-to-an-office-action/ A practical patent prosecution blog published by Michael Kondoudis Tue, 13 Jul 2010 12:07:52 +0000 hourly 1 http://wordpress.org/?v=3.0 By: Matsushita http://patentablydefined.com/2008/08/08/a-few-reasons-to-consider-including-a-listing-of-claims-in-every-response-to-an-office-action/comment-page-1/#comment-4772 Matsushita Tue, 28 Apr 2009 03:46:21 +0000 http://patentablydefined.com/?p=55#comment-4772 I agree in principle with you. To my knowledge, even if a response to a second or subsequent Office action dos not include any amendments to the claims, it would be definitely helpful for the Examiner to be able to refer to the response having the complete listing of claims in clean version in the event that a previous response to a previous Office action presented largely-amended claims with lots of markings. This would result in expediting the prosecution as suggested by you. I agree in principle with you. To my knowledge, even if a response to a second or subsequent Office action dos not include any amendments to the claims, it would be definitely helpful for the Examiner to be able to refer to the response having the complete listing of claims in clean version in the event that a previous response to a previous Office action presented largely-amended claims with lots of markings. This would result in expediting the prosecution as suggested by you.

]]> By: exmnr http://patentablydefined.com/2008/08/08/a-few-reasons-to-consider-including-a-listing-of-claims-in-every-response-to-an-office-action/comment-page-1/#comment-4714 exmnr Thu, 18 Sep 2008 23:54:05 +0000 http://patentablydefined.com/?p=55#comment-4714 I hate to be cynical but another reason not mentioned is that by filing a clean copy of the claims you may be able to trick a lazy, uninformed or just plain dumb examiner into not considering if, e.g., your preliminary amendment to the claims added new matter. I hate to be cynical but another reason not mentioned is that by filing a clean copy of the claims you may be able to trick a lazy, uninformed or just plain dumb examiner into not considering if, e.g., your preliminary amendment to the claims added new matter.

]]> By: Matt http://patentablydefined.com/2008/08/08/a-few-reasons-to-consider-including-a-listing-of-claims-in-every-response-to-an-office-action/comment-page-1/#comment-4712 Matt Fri, 08 Aug 2008 15:40:00 +0000 http://patentablydefined.com/?p=55#comment-4712 I would generally agree with you -- but have run into problems from Examiners that don't know what they're doing. For example, I've filed a response to a restriction requirement in which I elected and traversed, and included a listing of claims. Exr gave me a notice of noncompliance for not listing the non-elected claims as "withdrawn". Well, they weren't withdrawn, since I had traversed the rejection -- it's up to the Examiner to designate them withdrawn if/after the restriction is made final after consideration of the traversal. Examiner couldn't be convinced. Answer -- refile the election/traversal WITHOUT any listing of the claims. I would generally agree with you — but have run into problems from Examiners that don’t know what they’re doing.

For example, I’ve filed a response to a restriction requirement in which I elected and traversed, and included a listing of claims. Exr gave me a notice of noncompliance for not listing the non-elected claims as “withdrawn”. Well, they weren’t withdrawn, since I had traversed the rejection — it’s up to the Examiner to designate them withdrawn if/after the restriction is made final after consideration of the traversal. Examiner couldn’t be convinced. Answer — refile the election/traversal WITHOUT any listing of the claims.

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