The Intellectual Property Law Server

Welcome, Guest. Please Login or Register.
Jan 31st, 2023, 11:49pm

Forums Forums Help Help Search Search Members Members Calendar Calendar Login Login Register Register
   Intellectual Property Forums
  
  
Patent Filing and Prosecution
(Moderators: Forum Admin, JimIvey, JSonnabend)
   Ammendment in Office action
« Previous topic | Next topic »
Pages: 1  Reply Reply Send Topic Send Topic Print Print
   Author  Topic: Ammendment in Office action  (Read 598 times)
waterville
Newbie
*




   


Posts: 14
Ammendment in Office action
« on: Mar 26th, 2007, 7:43am »
Quote Quote Modify Modify

Hi
 
I have ONE independent and NINE dependent claims.  Now I want to cancel Claim #2 which is a dependent claim to claim #1.  Thus now Claim 1 will be amended to incorporate claim 2.
 
Is it a good claim amendment strategy for overcoming 102 rejection?  Apparently a lot of people employ this strategy and I don't know the reasoning behind this, can anyone explain this scenario please?
 
Thanks
IP Logged
Wiscagent
Full Member
***




   


Posts: 843
Re: Ammendment in Office action
« Reply #1 on: Mar 26th, 2007, 9:55am »
Quote Quote Modify Modify

If claim 2 was allowed, then combining claim 1 with claim 2 should result in an allowable independent claim.
 
Whether or not this is a good strategy depends on many factors.
IP Logged

Richard Tanzer
Patent Agent
JimIvey
Moderator
Senior Member
*****




  jamesdivey  
WWW

Posts: 2584
Re: Ammendment in Office action
« Reply #2 on: Mar 26th, 2007, 10:07am »
Quote Quote Modify Modify

One thing to remember is that Claims 3-10 in your example also depend from Claim 1.  So, amending Claim 1 to incorporate the limitations of Claim 2 effectively incorporates the limitations of Claim 2 into Claims 3-10 as well.  If Claims 3-10 already depended from Claim 2, there's no problem.  If not, you may have unwittingly narrowed Claims 3-10.  
 
Just be aware of what you're doing and why.
 
Regards.
IP Logged

--
James D. Ivey
Law Offices of James D. Ivey
http://www.iveylaw.com
Pages: 1  Reply Reply Send Topic Send Topic Print Print

« Previous topic | Next topic »
Powered by YaBB 1 Gold - SP 1.3.2!
Forum software copyright 2000-2004 Yet another Bulletin Board