[Patentpractice] status identifier "withdrawn"?

[Randall Svihla]

Hi, Carl

Does the Office Action Summary (form PTOL-326) show that claims 1 and 3 are withdrawn from consideration?  If so, you should use the status identifier "(withdrawn)" for them.  Even if it doesn't say that, you should still use them because the Examiner has examined claim 2 but not claims 1 and 3, so claims 1 and 3 are withdrawn from consideration.

It's possible that a Legal Instruments Examiner issued the Notice of Non-Compliant Amendment rather than the Examiner if the Notice was issued shortly after you filed the response.

Best regards,

Randall S. Svihla
NSIP Law
Washington, D.C.


From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Carl Oppedahl via Patentpractice
Sent: Friday, December 6, 2024 5:02 PM
To: patentpractice at oppedahl-lists.com
Cc: Carl Oppedahl <carl at oppedahl.com>
Subject: [Patentpractice] status identifier "withdrawn"?


When exactly am I required to use the status identifier "withdrawn"?

I was taught, years ago, that it was up to me when if ever I would use that status identifier.

Suppose there was a restriction between three independent claims 1, 2, and 3 and suppose I elect claim 2.

What I was taught was, I was not required to use a status identifier of "withdrawn" for claim 1 until I was good and ready.

Eventually maybe the time would come that claim 2 gets allowed, and maybe the client would be prepared to suck it up and get a patent with only claim 2.  If so, then I would cancel claim 1 and next thing you know I would get a notice of allowance.

Just now I have the following sequence of events (claim numbers changed to protect the innocent).

  *   Independent claims 1, 2, 3 filed.
  *   Examiner calls on the phone, restricts saying there are three inventions.
  *   On the phone I elect claim 2.
  *   Examiner mails an Office Action, memorializing the election and rejecting claim 2.
  *   I file a response to the Office Action.  Claims 1 and 3 have status identifier "original".  Claim 2 has status identifier "presently amended".
  *   Examiner mails a notice of non-compliant amendment, saying that I should have used status identifier "withdrawn" for claims 1 and 3.

Question.  Is this the Examiner busting my chops with a made-up rule?  Or is it really true that my hands are tied and I had no choice but to give a status of "withdrawn" for claims 1 and 3?
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