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Topic: Claim chart for a divisional (Read 1581 times) |
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ChiTownBob1
Newbie
Posts: 2
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Claim chart for a divisional
« on: Dec 15th, 2007, 1:43pm » |
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hi, I've been searching through the rules & MPEP for this and not finding anything. Suppose for simplicity the original app had three claims, each was considered to be a separate invention, and I elected #1. Now I've got divisionals for 2 and 3. Does each of them show all three claims, and if so, how? Would it be, for #2's divisional:
1.(previously allowed)
2. (original)
3. (withdrawn)
and then for #3's:
1.(previously allowed)
2. (withdrawn)
3. (original)
thanks a lot
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Bill Richards
Full Member
 
Posts: 758
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Re: Claim chart for a divisional
« Reply #1 on: Dec 15th, 2007, 8:58pm » |
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The DIV is a new application and the claim numbering starts anew. There are no designations like you mention.
You've also confused a claim chart. A claim chart shows the various elements of the various claims, usually in tabular form, so that the scope of each can be compared.
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| « Last Edit: Dec 15th, 2007, 8:59pm by Bill Richards » |
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William B. Richards, P.E.
The Richards Law Firm
Patents, Trademarks, and Copyrights
614/939-1488
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ChiTownBob1
Newbie
Posts: 2
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Re: Claim chart for a divisional
« Reply #2 on: Dec 16th, 2007, 3:26pm » |
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thanks, Bill. So you're saying in this example, I would just have two DIV's A and B, each with a claim 1?
Don't I at least need to point out that B's claim 1 corresponds to the original (pre-restricted) app's claim 2, and C's claim 1 to the original claim 3? Or is the examiner just expected to figure that out?
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DJoshEsq
Full Member
Posts: 104
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Re: Claim chart for a divisional
« Reply #3 on: Dec 17th, 2007, 12:38am » |
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on Dec 16th, 2007, 3:26pm, ChiTownBob1 wrote:thanks, Bill. So you're saying in this example, I would just have two DIV's A and B, each with a claim 1?
Don't I at least need to point out that B's claim 1 corresponds to the original (pre-restricted) app's claim 2, and C's claim 1 to the original claim 3? Or is the examiner just expected to figure that out? |
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I think you should hire a patent attorney. If invention 2 and 3 are truly separate inventions that can't be linked through claiming (which based on your questions, you probably aren't sophisticated to do this), then you must file two new applications. Each will be a divisional application and the claims start over. Just claim priority and make sure you call each application a divisional application. Good luck...but this is why we have professionals - I suggest that you contact one!
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D. Joshua Smith, Esq.
Registered Patent Attorney
McDonald Hopkins, LLC
Cleveland, OH
216-348-5400
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bcapehart
Newbie
Posts: 41
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Re: Claim chart for a divisional
« Reply #4 on: Dec 17th, 2007, 4:08pm » |
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CTB - What I have done in the past on some apps is to file the DIV with the original claim set and simultaneously file a preliminary amendment that cancels the claims from the initial group of claims that were prosecuted and explain the history - original file all claims, restriction requirement - Grp I and II, prosecute group I, file divisional for grp II, thus cancel claims from grp I.
In your example, it would go - original file with claims 1-3, restriction of claims 2 and 3, prosecution of claim 1, now filing divisional for claim 2, hence cancelation of claims 1 and 3.
This is not required, but it does allow for a tie back to the original filing. I started doing this a number of years ago after I was handed a case that had a string of DIVs, CIPs and CONTs. One of the appls was a DIV of a CIP of a CIP of a DIV of CONT of an initial filing. The history was over 10 years old.
Best of luck.
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| « Last Edit: Dec 17th, 2007, 4:11pm by bcapehart » |
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Brent A. Capehart
Patents, Trademarks, Copyrights
Deep in the Ozark Mountains
bcapehart@ozarklawyer.com
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