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 41 
 on: 07-24-17 at 01:11 pm 
Started by Patentstudent - Last post by Patentstudent
bartmans, thank you for this information.
I also like the example.

 42 
 on: 07-24-17 at 12:05 pm 
Started by novobarro - Last post by novobarro
If my spec discloses a material comprises A, B, or C.  The material can also comprise A and C.  Does the spec support the material can also comprise B and C?

 43 
 on: 07-24-17 at 11:48 am 
Started by Weng Tianxiang - Last post by lazyexaminer
Hey, thanks for the recap.  I thought my memory was really going when I saw your comment on "preferably".  I had always thought of 150 words as a hard limit, without the qualifier "preferably".  But when I checked the 37 CFR 1.72(b), there it was.  Hadn't realized the "preferably" had been added as recently as 2013.   

Yeah, I still think of it as a hard requirement because it was that way for most of my career, it still doesn't always register that it isn't. Fortunately that rarely matters...

 44 
 on: 07-24-17 at 11:43 am 
Started by Rabid Levity - Last post by still_learnin
There is no need/requirement to "mark up" the corrected submission.

Agreed. "Summary" in the Appeal Brief is not "Summary" in the spec, so you are not amending the spec. Furthermore, nowhere in the Appeal Brief rules does it mention mark-up.

The only weird thing I know about for resubmitting a corrected Appeal Brief is that you can re-submit only the section that is defective.

At least, this was true the last time I dealt with this issue. Resubmission of only the defective part was specifically mentioned in the Notice of Defective Appeal Brief. Not sure if this is still the case, YMMV.

 45 
 on: 07-24-17 at 11:19 am 
Started by Weng Tianxiang - Last post by smgsmc
Hi smgsmc.

Your comment made me curious so I just did some Fed. Reg. searching.

Abstracts were first required in 37 CFR 1.72(b) for any app without a first action on 11/1/1966. The first requirement was just a "brief" abstract with no word requirement.

Not until 2000 was there a word requirement. 1.72(b) was amended to read that the abstract "may not exceed 150 words." It was said that this was done to harmonize with PCT requirements.

Note, the PCT always included in rule 8.1 a word count requirement for the abstract of preferably 50 to 150 words in English. So the 2000 change was not quite a harmonization--a strict requirement vs preferably.

In 2013 1.72(b) was amended to its current form, with "preferably not exceeding 150 words in length." The Fed Reg cited PCT Rule 8.1, so I guess the intent was to now really harmonize with PCT. This was part of a rulemaking called "Changes to Implement the Patent Law Treaty" so perhaps the PLT required more exact harmonization with the PCT in such formal requirements, I don't know.**

Anyway, I agree with you that characters would seem more useful than words, but here the word requirement seems to come from the PCT.

**Edit to Add: yes, the PLT requires that any requirements as to form of the application cannot be different from or additional to those of the PCT, so there you go.
Hey, thanks for the recap.  I thought my memory was really going when I saw your comment on "preferably".  I had always thought of 150 words as a hard limit, without the qualifier "preferably".  But when I checked the 37 CFR 1.72(b), there it was.  Hadn't realized the "preferably" had been added as recently as 2013.   

 46 
 on: 07-24-17 at 10:55 am 
Started by Weng Tianxiang - Last post by lazyexaminer
Hi smgsmc.

Your comment made me curious so I just did some Fed. Reg. searching.

Abstracts were first required in 37 CFR 1.72(b) for any app without a first action on 11/1/1966. The first requirement was just a "brief" abstract with no word requirement.

Not until 2000 was there a word requirement. 1.72(b) was amended to read that the abstract "may not exceed 150 words." It was said that this was done to harmonize with PCT requirements.

Note, the PCT always included in rule 8.1 a word count requirement for the abstract of preferably 50 to 150 words in English. So the 2000 change was not quite a harmonization--a strict requirement vs preferably.

In 2013 1.72(b) was amended to its current form, with "preferably not exceeding 150 words in length." The Fed Reg cited PCT Rule 8.1, so I guess the intent was to now really harmonize with PCT. This was part of a rulemaking called "Changes to Implement the Patent Law Treaty" so perhaps the PLT required more exact harmonization with the PCT in such formal requirements, I don't know.**

Anyway, I agree with you that characters would seem more useful than words, but here the word requirement seems to come from the PCT.

**Edit to Add: yes, the PLT requires that any requirements as to form of the application cannot be different from or additional to those of the PCT, so there you go.

 47 
 on: 07-24-17 at 10:42 am 
Started by Weng Tianxiang - Last post by Weng Tianxiang
Hi smgsmc,

I am laughing at how you can find the most longest word and the shortest word: "a" is on the same footing as "antidisestablishmentarianism", ha, ha!

Weng

 48 
 on: 07-24-17 at 09:52 am 
Started by Weng Tianxiang - Last post by Weng Tianxiang
Hi,

"Logic" is an uncountable noun, and I found that Microsoft WORD picks my word "at least one combinational logic" as an error.

Here is what I have written:
1. A combinational logic;

2. The at least one combinational logic.

Now I want to change it as follows:

1. A piece of combinational logic;

2. The at least one piece of combinational logic;

Is the correction acceptable?

Another English grammar puzzle for me is:

I see "claim drafting" and "claims drafting", I don't know which is right?

Here is another example:

"Claim dependence" vs. "Claims dependence"

Thank you.

Weng

 49 
 on: 07-24-17 at 09:44 am 
Started by Weng Tianxiang - Last post by smgsmc
Hi lazyexaminer.  I know that many rules are often not based on logic.  But I was wondering if you knew why the limit is based on 150 words and not X characters.  The usual reason for such a limitation is because there's a fixed block of space for publication.  So a limit on the total number of characters would make sense (e.g., max title length is based on number of characters).  But with a word count limitation, "a" is on the same footing as "antidisestablishmentarianism".

 50 
 on: 07-24-17 at 09:31 am 
Started by Rabid Levity - Last post by ThomasPaine
There is no need/requirement to "mark up" the corrected submission.

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