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 on: Today at 03:16 pm 
Started by samar - Last post by Weng Tianxiang


US20030173072A1 (application)

Title: Forming openings in a hydrocarbon containing formation using magnetic tracking
Publication Date: Sep 18, 2003
Claims: 8,958

 on: Today at 03:03 pm 
Started by samar - Last post by samar

My patent attorney does not care after he took the money.
How can I make my patent attorney works better?
Is there an authority to complain to ?

 on: Today at 02:55 pm 
Started by Patentstudent - Last post by Patentstudent
smgsmc, thank you.
It is never too late for such a helpful reply.

 on: Today at 02:53 pm 
Started by samar - Last post by samar
Dear friends,
what is the max. number of non provisional claims and how can be increased?

 on: Today at 02:28 pm 
Started by Rheo - Last post by Rheo

I took over an application that has gone through a couple of RCE cycles and it is more of a mess than when it started. This application is also coming up on a hard 6-month deadline. I want to offer a continuation as one of a number of options (continuation, RCE, divisional w/ the non-elected claims), and I guess the advantage would be a fresh start with new claims. The advantage to me (which I'm not going to stress to the client ...) is that I would have more time to get familiar with this complicated mess.

 on: Today at 02:00 pm 
Started by PHInventor - Last post by mersenne
One minor point not mentioned by previous commenters' (excellent!) responses, concerns your presentation of a dependent claim that is not supported by the PPA.  You can include such a claim in your NPA, even if you don't add any material to the specification, because the originally-filed claims are deemed to support themselves.  The burden on the examiner to reject something for lack of written description is higher for an original claim than for subsequent amendments.  So your new dependent claim might survive review, but if the examiner can force you to amend it, then your situation may go downhill rapidly.

For a dependent claim, it doesn't matter so much: you could reasonably throw in some dependents that aren't clearly and unambiguously described in the spec, particularly if they talk about conventional design options using conventional terms.  But for an independent claim, and for important dependents, you want to be sure the specification describes them well, and also describes the material "between" the invention and the prior art so you can argue (and amend, if necessary) to localize the claims to your invention, rather than leaving them unmoored to be dragged over to prior art by the examiner.

 on: Today at 01:46 pm 
Started by Rheo - Last post by mersenne
I have an inventor who puts a ton of stuff in his applications.  We often have bushy prosecution trees (which I hate).  We occasionally wind up in a situation where we file several continuations and then let a branch go abandoned.  As far as I know, the only difference between a CON and a DIV is that the DIV is the first application after a restriction requirement, which presents claims that were not elected in the parent.  (As I understand it, further applications following the DIV are CONs, even if they're presenting other claims that were also not elected in the ancestor.)

I don't think there's any limit on the claims you put back after a restriction, but the practical boundaries are Double Patenting rejections on one end, and renewed Restriction Requirements on the other.  If you only put in claims drawn to a non-elected group, you'll probably have the smoothest prosecution.

An RCE is appropriate for claims where you've made some progress in a previous cycle and want to continue.  I'd probably file a CON if I was going to submit completely new claims, though, even if they were intended to cover the same material as claims in a previous application.  (I think there used to be a difference in how quickly an RCE would get back into prosecution compared to a CON, but I don't know if that's still the case.)

 on: Today at 12:40 pm 
Started by Rheo - Last post by smgsmc
There are several options, each with different consequences.  Before I delve into them, please clarify one item:  if you wish to pursue active claims, why do you want to file a con and abandon the parent instead of filing an RCE?

 on: Today at 11:43 am 
Started by PHInventor - Last post by Weng Tianxiang
The simplest and 100% sure way in your situation, I think, is not to change anything in your NPA, the reason is very clear:

1. If an interference occurs, it occurs on an independent claim, and all dependent claims play trivial role, or no role at all.

2. Any detailed dependent claim plays a role only to support its parent independent claim if the parent independent claim reads on a prior art that was not discovered during prosecution.

For an NPA, it is much better if it gets allowance as earlier as possible without more added dependent claims.

Sometimes I think more independent claims are more valuable than same number of claims.



 on: Today at 08:31 am 
Started by Rheo - Last post by Rheo
What is the easiest way to handle a continuation of an application that was subject to a restriction (there are active claims and withdrawn claims).

Would a continuation have to be filed for the active claims and another application (divisional) have to be filed for the withdrawn claims? Any way to just file one application with all of the claims?

If the initial application goes abandoned after a continuation for the active claims is filed, can the withdrawn claims also be filed in an application at some later date based only upon the specification or would they be lost in some way?

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