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Bill Richards
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Easy Question
« on: Aug 17th, 2006, 6:52pm »
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I know I should know the answer to this off the top of my head, but it's been so long, I don't.  (In reality, I've slept since then.)
Anyway, I'm filing a Pet. to Rev. (The case went abandoned and is being revived in the same transmittal.), an RCE, and a Pre. Am.  I'll be canceling all but the allowed claims from the previous OA.  (A CON will be filed later.)
Question:  Is PTO/SB/30 sufficient for the RCE, or will I have to include another paper in addition to the Pre. Am. and the Pet. to Rev.?
Thanks, guys!
 
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William B. Richards, P.E.
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JimIvey
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Re: Easy Question
« Reply #1 on: Aug 17th, 2006, 7:40pm »
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This may be non-responsive, but I'm not sure it would be a Preliminary Amendment.  The RCE is supposed to include a submission you would have submitted in response to the prior Office Action, so the Amendment would not be "Preliminary."
 
And, if you're canceling all but the allowed claims, why are you filing an RCE?  You're allowed to cancel rejected claims in response to a final Office Action -- no RCE required.  
 
So, I'd file the Petition to Revive and an Amendment in response to the final Office Action in which you only cancel rejected claims.  What transmittal goes with that is not something I'm sure of off the top of my head.
 
Regards.
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James D. Ivey
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Re: Easy Question
« Reply #2 on: Aug 17th, 2006, 8:46pm »
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Jim wrote “…The RCE is supposed to include a submission you would have submitted in response to the prior Office Action, …"  
 
That’s generally true, but (picking nits) 37 CFR 1.114 states:
 
  (a) If prosecution in an application is closed, an applicant may request continued
  examination of the application by filing a submission and the fee …
 
  (c) A submission as used in this section includes, but is not limited to, an information
  disclosure statement, an amendment to the written description, claims, or drawings,
  new arguments, or new evidence in support of patentability.  If reply to an Office
  action under 35 U.S.C. 132 is outstanding, the submission must meet the reply
  requirements of sec. 1.111.
 
So there can be a situation wherein all the claims have been allowed (i.e. prosecution is closed) but a new reference is discovered.  In that case you may need to file an RCE just so that you can submit an IDS.  There can be other situations where an RCE is required so that you can fix a defect after allowance but before the patent issues.
 
Richard Tanzer
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Bill Richards
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Re: Easy Question
« Reply #3 on: Aug 18th, 2006, 8:05am »
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Thanks for your help!
In fact, I made a quick call to the PTO and they agree.  All that required is Form /64 and the amendment as suggested by Jim.
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William B. Richards, P.E.
The Richards Law Firm
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