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Topic: What is going on? (Read 1540 times) |
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John Haller
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I am independent inventor and I responded to an office action. I received a notice of non compliance for not supplying a clean copy of the amended specification. Does this require a clean copy of the old specification? Where in the MPEP or CFR is this? Do you have to do this to the claims as well? I thought they didnt require this anymore! Dont they have an old copy of the application previous the office action?
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wallflower
Junior Member
Posts: 96
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Re: What is going on?
« Reply #1 on: Aug 24th, 2006, 1:25am » |
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Here is a link to the FAQ for the revised amendment practice that you may find helpful: http://www.uspto.gov/web/offices/pac/dapp/revised121qnas.htm.
When applicants file a substitute specification, the following are required under 37 CFR 1.125: (1) a statement that the substitute specification includes no new matter; (2) a marked-up version of the specification with markings to show all the changes relative to the immediate prior version; and (3) a clean version of the substitute specification.
Although a complete listing of claims is generally required, a clean version of the claims is not necessary anymore.
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John Haller
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wallflower,
thanks. I should probably get someone to respond for me. Do I have to submit everything again? I guess I mean all the forms and things or can I just send the part of the office action that was non-compliant. If not, what a waste of paper.
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JimIvey
Moderator
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Posts: 2584
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Re: What is going on?
« Reply #3 on: Aug 24th, 2006, 8:53pm » |
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I suppose it depends on what you mean by "everything". If your prior response included a proper Petition for Extension of Time, you may not have to re-send that if your substitute reply is timely. To the extent fees are required and already paid, you don't need to re-send those either. However, you should send in a complete, compliant response.
For what it's worth, there are paperless ways to do it, but they require a bit of set-up -- so typically only frequent filers bother. If you can set up a paperless fax transmission, that would save paper.
Regards.
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James D. Ivey
Law Offices of James D. Ivey
http://www.iveylaw.com
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TataBoxInhibitor
Full Member
Posts: 456
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Re: What is going on?
« Reply #4 on: Aug 25th, 2006, 5:32am » |
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Every time I have amended the specification, I have included a clean version with the response. I am wondering, if a practioner has made the most minor of corrections in the specification, is it necessary to file a clean version of the substitute specification?
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