Intellectual Property Forums - Ammendment in Office action

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

Forums

Help

Members

Calendar

   Intellectual Property Forums

   Patent Filing and Prosecution (Moderators: Forum Admin, JimIvey, JSonnabend)
   Ammendment in Office action

« Previous topic | Next topic »

Pages: 1

Send Topic

Author

Topic: Ammendment in Office action (Read 598 times)

waterville
Newbie

Posts: 14

Ammendment in Office action
« on: Mar 26^th, 2007, 7:43am »

Quote

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 26^th, 2007, 9:55am »

Quote

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

Posts: 2584

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

Quote

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

Send Topic


« Previous topic \| Next topic »