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   What is going on?
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   Author  Topic: What is going on?  (Read 1540 times)
John Haller
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What is going on?
« on: Aug 23rd, 2006, 10:25pm »
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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
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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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Re: What is going on?
« Reply #2 on: Aug 24th, 2006, 6:40pm »
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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
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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
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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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