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 91 
 on: 11-19-17 at 02:55 pm 
Started by RolandS - Last post by RolandS
I have read on this forum that I can just file drawings consisting of boxes where I name the boxes according the structural elements used in the description.
And that this would not introduce new matter.
Will this be sufficient?

Also with the BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWINGS, do I have to address every figure from scratch or can I write that figure 2 depicts  the same as with figure 1 except that widget 2 is shifted forward with respect to widget 4
And that in figure 3 with respect to figure 2 an additional widget 4 is shown and also a widget 5, while widget 5 is not referenced in figure 3 but that reference can be taken from figure 4 showing a similar embodiment with the same widget 5?

If every widget has to be referenced with its reference number in every figure, there is just not enough space for all the numbers.


 92 
 on: 11-19-17 at 11:54 am 
Started by prime - Last post by snapshot
Not only is MPEP 800 a mess, restriction practice from unit to unit (and even examiner to examiner within a unit) at the PTO is an inconsistent mess.

 93 
 on: 11-19-17 at 06:50 am 
Started by novobarro - Last post by smgsmc
Attorney or agent?  Firm size (small, medium, big)?

 94 
 on: 11-19-17 at 02:25 am 
Started by novobarro - Last post by novobarro
I have approximately 3 years of experience and am considering trying to find a work at home position.  Any downfalls to working at home?

 95 
 on: 11-18-17 at 10:24 pm 
Started by brettas39 - Last post by brettas39
Thank you all very much!  I went into EFS, entered the data for existing applications that I just submitted, and then went right to the fees tab to calculated the fees again and paid online.

 96 
 on: 11-18-17 at 09:56 pm 
Started by prime - Last post by ExaminerBob
MPEP800 is a mess.

While I am sympathetic to your position, I am not certain it is correct. The conventional meaning of "mutually exclusive" would seem to prevent the restriction of "a system comprising A." / "a system comprising B." If your interpretation disallows restriction between an invention comprising a MRI machine from an invention comprising a kitchen sink, its probably not correct.

 97 
 on: 11-18-17 at 08:44 pm 
Started by brettas39 - Last post by MYK
I've done it, although rather than a second filing I had to use the fax machine to fax in a PTO-2038.  IIRC they told me to call the central fax office to let them know, and I think they even looked it up while I was on the phone with them to make sure they could find it.

Anyway, yes, payment made the same day *should* avoid the late fees and so on.  You may want to call the EBC to make sure there aren't any special steps they need to take, though.

 98 
 on: 11-18-17 at 06:21 pm 
Started by brettas39 - Last post by mersenne
I think I have done this once or twice, and I think your plan is correct: just go into EFS-Web and make an additional filing into the case.  Skip through to the "Fees" section and fill out what you need to pay, then pay.  If you have a payment receipt from the same day, you should be OK.

The system has gotten much faster than it used to be; now you can access a newly-filed case (by serial number and confirmation code) within a few minutes of filing.

 99 
 on: 11-18-17 at 04:47 pm 
Started by brettas39 - Last post by brettas39
I have a situation where I was attempting to pay the fee online after submitting a patent application (371 national entry from a pct application) on the EFS-web this early morning at 12:08 A. M.  Unfortunately, the USPTO store front to all online paying was down for maintenance until 5 am today.  So, I could not pay them after trying to do so.  So, I clicked on the option to get the acknowledge receipt with no payment of the fees. The electronic acknowledgment shows a receipt date of November 18 (today).  Is there a way to pay the fees online (via credit card) today, November 18, for this application so that I will not be charged the surcharge?  One possible solution I think is that you go into the efs-web (I am a registered user), click on the existing application and then simply go to the fee tab and put in the fee information and calculate the fees, then submit, click pay now, and then pay online. I am not sure of this though.

If this is not the case, I heard on another forum that you can ignore that submission and instead file a new submission and get the filing date the day you file the new submission.  The ignored one will simply go away, but I am not sure. The filing date of November 18 is not critical.  I can file it Monday, November 20 again if I need to. Any thoughts to avoid the surcharge?


 100 
 on: 11-17-17 at 11:18 pm 
Started by prime - Last post by prime
Specification discloses an invention with ABCD.  One independent claim claims ABC, another ABD.  My understanding is that an examiner cannot restrict between the two independent claims, because they are not mutually exclusive.  Examiner note 1 to form paragraph 8.14.01 says, "This form paragraph may be used when claims are presented to two or more related product inventions, or two or more related process inventions, wherein the inventions as claimed are mutually exclusive, i.e., there is no product (or process) that would infringe both of the identified inventions."  The disclosed ABCD would infringe both claims (ABC and ABD), so the claims are not mutually exclusive.

Further support for this position is found in slides 13 and 26 from an old USPTO training presentation regarding restriction practice that I found at the AIPLA site (Note: Use at your own risk!  Current training materials at the patent office site do not include these slides.).

Slide 13:
"Specification discloses a pair of chopsticks wherein the preferred embodiment is a pair of 8 inch long bamboo chopsticks, with wider square handles tapering down to narrow tips.
Claim 1.  A pair of bamboo chopsticks with square handles.
Claim 2.  A pair of chopsticks which are tapered from one end to the other.
Claim 3.  A pair of 8 inch long bamboo chopsticks."

Slide 13 notes:
"Claims 1, 2, and 3 encompass the disclosed preferred embodiment.
Claims 1, 2, and 3 overlap in scope with each other/are not mutually exclusive.
The one preferred embodiment would infringe upon claims 1, 2, and 3.
For these reasons, restriction between claims 1, 2, and 3 should never be required."

Slide 26 notes:
"Note that the specification should be consulted when determining what the scope of the claims is if claim 1 is drawn to AB and claim 2 is drawn to AC, and the specification discloses an embodiment ABC, AB and AC are not mutually exclusive."


However, the examiner required restriction between ABC and ABD.  He cites 806.05: "Related inventions in the same statutory class are considered mutually exclusive, or not overlapping in scope, if a first invention would not infringe a second invention, and the second invention would not infringe the first invention."  He claims ABC is the first invention, and would not infringe ABD, and vice versa.  It seems to me that the two definitions of "mutually exclusive" aren't compatible, and the definition relied upon by the examiner is contrary to the normal definition of mutually exclusive.  Is my interpretation correct? 

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