[Patentpractice] PPH: What Amendments are Permitted?

[Jeffrey Semprebon]

This limitation suggests a possible reply strategy of presenting the
corresponding claim and dependent claim in the same action, with remarks
stating that Applicant does not contest the Examiner's rejection of the
corresponding claim, that it's only being provided to conform to the rules
in presenting the arguably patentable dependent claim, and authorizing the
Examiner to add the limitations of the corresponding claim into the
dependent claim and cancel the corresponding claim via Examiner's amendment
(perhaps with the remarks giving an example of how the resulting amended
claim should read, so the Examiner can just cut and paste). The remarks
then argue why the dependent claim would distinguish over whatever new art
the Examiner has cited.

The requirement reads as though the intention was to make it really easy
for Examiners to compare the corresponding claims with the "approved" PCT
claims, without having to interpret any added limitations. Then, once
they've seen that the broader claim corresponds to a PCT claim, they can
consider any narrower dependent claims.


-Jeff

Jeffrey E. Semprebon
Semprebon Patent Services
www.semprebonps.com
72 Myrtle Street
Claremont, New Hampshire 03743
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