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[NoCode416]

my originally filed application had an independent claim with limitations A, B, C, D, and E

i received an office action and amended claims by canceling original claim and added two new claims: (1) A, B, C, and E; and (2) A, B, and C

i just received another office action stating that the reply was not fully responsive because my amendment now creates new inventions which were not previously claimed and are independent and distinct from one another. 

is this proper?

[JimIvey]

Hopefully, others here who know the MPEP forwards and backwards can tell you more, but a few things come to mind.

First, if you had only the one claim, there may be a problem with canceling all claims and adding new ones in an amendment.  You would have done better to leave the original claim and add the other two, or to amend the claim to be (1) and add (2) as a second claim.  Unless....

Second, it sounds as if the examiner considers the added claims distinct from one another (and, more importantly, from the original claim).  For example, if you claimed a car and then cancel the claim and add a claim for a brake pad, you've effectively abandoned your original application and substituted a different application (for a different invention) in the middle of prosecution.  You're not supposed to do that.  Of course, the examiner could be wrong, but I think that might be what the examiner is saying.

I think you would have done better to leave the original claim there, perhaps amended.  Of course, it makes no difference substantively, just procedurally.  What's the substantive difference between (i) amending A, B, C, D, and E to A, B, C, and E and (ii) canceling A, B, C, D, and E and adding A, B, C, and E?  None whatsoever.

Regards.

[patentatt]

my originally filed application had an independent claim with limitations A, B, C, D, and E

i received an office action and amended claims by canceling original claim and added two new claims: (1) A, B, C, and E; and (2) A, B, and C

i just received another office action stating that the reply was not fully responsive because my amendment now creates new inventions which were not previously claimed and are independent and distinct from one another. 

is this proper?

The Office generally does not permit a shift in invention during prosecution.  MPEP 819 and 821.03.

MPEP 821.03 includes form paragraphs 8.04 and 8.26, which should have been used in your office action.

Paragraph 8.26 states that "The amendment filed on [1] canceling all claims drawn to the elected invention and presenting only claims drawn to a non-elected invention is non-responsive ( MPEP § 821.03). The remaining claims are not readable on the elected invention because [2]."

Thus, the Examiner should have made the statement in bold.  However, the statement must be false: the inventions (1) A, B, C, and E; and (2) A, B, and C both read on (3) A, B, C, D, and E.

Further, it makes no sense for the Examiner to complain - broader claims make the examiner's job easier.  If the Examiner rejected the original claim over prior art, the same prior art should make the new claims unpatentable.

You could also argue that 37 CFR 1.145 only applies when "the applicant presents claims directed to an invention distinct from and independent."  MPEP 821.03 rewrites the regulation to state "or" instead of "and", but regulations trump the MPEP.  Also, your three inventions here are clearly not independent from each other (i.e. unrelated to each other).

Alternatively, you could simply add A, B, C, D, and E again.  It would serve as a linking claim, which allows all three claims to be examined together.  MPEP 806.05(c) III.

Similarly, claim A, B, and C serves as a linking generic claim for all claims that it reads on.  MPEP 806.04.

[khazzah]

my originally filed application had an independent claim with limitations A, B, C, D, and E

i received an office action and amended claims by canceling original claim and added two new claims: (1) A, B, C, and E; and (2) A, B, and C

i just received another office action stating that the reply was not fully responsive because my amendment now creates new inventions which were not previously claimed and are independent and distinct from one another. 

is this proper?

It's "proper" in that an invention not presented in the original claims is properly restrictable (restrict-out-able?). See the MPEP section referred to by patentatt.

It's also "proper" in the sense that the Examiner can treat your reply as non-responsive. The same MPEP section covers this.

I blogged about this very topic a long time ago http://allthingspros.blogspot.com/2009/12/what-happens-when-claims-to-different.html
though I don't think my post says much that hasn't been said in this thread.

[JustAnotherExaminer]

my originally filed application had an independent claim with limitations A, B, C, D, and E

i received an office action and amended claims by canceling original claim and added two new claims: (1) A, B, C, and E; and (2) A, B, and C

i just received another office action stating that the reply was not fully responsive because my amendment now creates new inventions which were not previously claimed and are independent and distinct from one another. 

is this proper?

You also must address the prior art rejections in the last office action.

Though that could be as simple as "applicant has entered new claims and believes prior rejections now moot". Though you'll need more if you entering the same subject matter.

[Isaac]

Though that could be as simple as "applicant has entered new claims and believes prior rejections now moot". Though you'll need more if you entering the same subject matter.

I suppose somewhere there is a government official pedantic enough to attempt to hold a reply to be non-responsive for this reason, but I've never seen it happen.