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[NJ Patent1]

"First impression" for me.  A provisional landed on my desk 2 days before the 1 year anniversary.  Fortunately, the PPA was filed with claims, so I only had to tend to formal matters.  Unfortunately, the claims had extraneous words (apparently to explain to client what aspects were being addresses in each claim “group”).  Easy to fix.  But there were also two “gaps” in the numbering of claims that will need to be fixed. 

My initial reaction is to just cancel all claims and present sequentially numbered new claims (and hope I don’t screw-up dependencies).  But can one also “amend” claim numbering w/ brackets and underlining? 

[George White]

If you are essentially refiling a cleaned up version of the PPA as an NPA getting the benefit of the PPA why can't you just renumber the claims as part of the cleaning up before you file? 

--George

[NJ Patent1]

George:  Good point.  In principle I could have.  We are discussing a deal already done.  I only had a PDF version of the app and claims.  Under the particular circumstance I won't bore you with, there simply was not time to "proof" and correct an OCR'd version.  Adobe X is good, not perfect.  And the PTO requires "perfection", at least in the claims (picky, picky, nit-picky).  I was focused on salvaging the priority claim, which I did. 

[klaviernista]

"First impression" for me.  A provisional landed on my desk 2 days before the 1 year anniversary.  Fortunately, the PPA was filed with claims, so I only had to tend to formal matters.  Unfortunately, the claims had extraneous words (apparently to explain to client what aspects were being addresses in each claim “group”).  Easy to fix.  But there were also two “gaps” in the numbering of claims that will need to be fixed. 

My initial reaction is to just cancel all claims and present sequentially numbered new claims (and hope I don’t screw-up dependencies).  But can one also “amend” claim numbering w/ brackets and underlining? 

You can file a entirely new claim set with claim numbers beginning from #1 (meaning the original PPA claim set is not filed).  OR you can file the PPA claim set and a preliminary amendment canceling the original claims in favor of a new claim set beginning with the number following the last number in the PPA claim set.

Remember, once the application is filed you cannot renumber the claims.

"37 CFR 1.126 Numbering of claims.

The original numbering of the claims must be preserved throughout the prosecution. When claims are canceled the remaining claims must not be renumbered. When claims are added, they must be numbered by the applicant consecutively beginning with the number next following the highest numbered claim previously presented (whether entered or not). When the application is ready for allowance, the examiner, if necessary, will renumber the claims consecutively in the order in which they appear or in such order as may have been requested by applicant."

[NJ Patent1]

Klav:  Thanks.  "Damage" is already done.  Had no time to file new "origianl" claims.  You confirmed what I thought was the case.  "New" claims beginning @ # 31. 

[bleedingpen]

I have amended claim numbers before:

e.g

1.  a widget
2.  the widget of 1, having awesomeness.
4.  the widget of 1, being cool.
4.  the widget of 1, being wicked.

1.  a widget
2.  the widget of 1, having awesomeness.
[[4.]]  3.  the widget of 1, being cool.
4.  the widget of 1, being wicked.

[JimIvey]

I have amended claim numbers before:

e.g

1.  a widget
2.  the widget of 1, having awesomeness.
4.  the widget of 1, being cool.
4.  the widget of 1, being wicked.

1.  a widget
2.  the widget of 1, having awesomeness.
[[4.]]  3.  the widget of 1, being cool.
4.  the widget of 1, being wicked.

I have as well, at the examiner's request.  But only in similar situations: duplicate claim numbers or numbers like "3.1".

I only had a PDF version of the app and claims.  Under the particular circumstance I won't bore you with, there simply was not time to "proof" and correct an OCR'd version. 

If the PDF was not scanned and was generated from text directly (e.g., by exporting to PDF in OpenOffice.org or perhaps printed to PDF), you should be able to just copy and paste the text -- no OCR required.

Regards.

[NJ Patent1]

Bleeding, Jim;  Thanks for the replies.  In my case I have two "gaps";  claim 10 was followed by claim 12 and claim 21 was followed by claim 23.  Not quite the same as the inadvertent duplicate in Bleeding's scenario.  Good to know this option may exist is simple situations.  At bottom, the amount of time to fix will be about the same, so I'll take the "safe" course and file "new" claims beginning w/ the number one greater than that of the last cancelled claim.  I'll keep the disctinction in source of the PDF in mind for future reference.  Best, NJP1