[Patentpractice] NO SOUP FOR YOU!

Wed Oct 8 15:46:48 UTC 2025

I just filed my petition.

Also, I filed a response to the Notice of Non-Compliant Amendment just in case it is needed prevent abandonment… below is what I submitted.

Was a bit therapeutic, though I’m still spitting mad…

Response to NCA:

Dear Sir:
Applicant respectfully requests that the Notice of Non-Compliant Amendment mailed September 15, 2025 be withdrawn as improper.  Specifically, the alternative claim status identifiers employed in the Response filed September 1, 2025 clearly and accurately set forth the status of each claim.  As such, per MPEP 714(C)(E) and “Acceptance of Certain Non-Compliant Amendments Under 37 CFR 1.121(c)” 1296 OG 27 (July 5, 2005), the Notice of Non-Compliant Amendment should properly be withdrawn and the Response filed September 1, 2025 should be entered.  See also the reasons specified in the enclosed Petition to the Director.
Should the Notice be maintained, submitted herewith is the claims section with the status identifier for the withdrawn claims indicated only as "(Withdrawn)" (even for the withdrawn claim that is amended.

Petition to the Director:

Dear Sir:

This is a Petition requesting that the Director review and withdraw the Notice of Non-Compliant Amendment mailed in the above-referenced application on September 15, 2025 (“Notice”, enclosed).

The Notice incorrectly indicates that the claim status identifiers “(Withdrawn-Original) and (Withdrawn-Previously presented)” are not proper and therefore denied entry of Applicant’s claim amendments and response that were filed September 1, 2025 (“Prior Response”, enclosed).

The Notice should properly be withdrawn and the Prior Response entered as being compliant for the following reasons:

1) The Notice itself is defective as the status identifiers indicated as being improper were not employed in the Prior Response.  Instead, the status identifiers “(Withdrawn, Previously presented)”, “(Withdrawn, Currently amended)”, and “(Withdrawn, Original)” were used.

2) MPEP 714(C)(E) specifies that alternative status identifiers may be used so long as the status of the claims is accurate and clear.  See also Acceptance of Certain Non-Compliant Amendments Under 37 CFR 1.121(c), 1296 OG 27 (July 5, 2005) (“OG Notice”, enclosed).

3) The only deviation from status identifiers that the USPTO itself explicitly states are acceptable is the use of a comma “,” instead of a dash “-” after the “Withdrawn” designation.  Certainly, the use of a comma does not suddenly make the status of the given claim unclear.  In fact, the use of a comma is arguably clearer as the comma technically means “and” whereas a dash can be mistaken to mean “through” or “to”, which then leads to the question: What other status identifiers are meant to be included via the dash?

4) Since the OG Notice of July 5, 2005 the USPTO has not published any further Notice whereby the USPTO has withdrawn its policy of accepting alternative claim status identifiers that clearly and accurately designate the status of a claim.

5) Since the OG Notice, the undersigned has employed the alternative status identifiers “(Withdrawn, Previously presented)”, “(Withdrawn, Currently amended)”, and “(Withdrawn, Original)” for claim amendments submitted on behalf of a variety of different applicants.  To the best of the undersigned’s recollection, since at least June 15, 2014, none of these alternative status identifiers have been rejected by the USPTO as being non-compliant.  Thus, the rejection of the same status identifiers in this application clearly violates the Administrative Procedure Act (APA) and should be set aside as being arbitrary, capricious, and an abuse of discretion.  See 5 U.S.C. 706(2)(A).

6) Maintaining the Notice will force Applicant to submit another response and thereby cause Applicant to lose potential Patent Term Adjustment (PTA) days, which just one day of PTA can be worth millions in market exclusivity and/or licensing fees.

For at least these reasons, Applicant respectfully requests that the Director (1) withdraw the Notice of Non-Compliant Amendment, (2) direct the entry of Applicant’s Prior Response filed September 1, 2025, and (3) either instruct Legal Instruments Examiners to accept such alternative claim status identifiers or publish a new OG Notice that retracts the OG Notice of July 5, 2005 so applicants do not detrimentally rely thereon.

Suzannah K. Sundby<http://www.linkedin.com/in/ssundby/> | Partner
canady + lortz LLP<http://www.canadylortz.com/>
1050 30th Street, NW
Washington, DC 20007
T: 202.486.8020
F: 202.540.8020
suzannah at canadylortz.com<mailto:suzannah at canadylortz.com>
www.canadylortz.com<http://www.canadylortz.com/>
Confidentiality Notice:  This message is being sent by or on behalf of a lawyer.  It is intended exclusively for the individual or entity to which it is addressed.  This communication may contain information that is proprietary, privileged or confidential, or otherwise legally exempt from disclosure.  If you are not the named addressee, you may not read, print, retain, copy, or disseminate this message or any part.  If you have received this message in error, please notify the sender immediately by e-mail and delete all copies of the message.

From: Carl Oppedahl <carl at oppedahl.com>
Sent: Monday, September 15, 2025 7:36 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>; Goldberg, Judi <jgoldberg at leydig.com>
Subject: Re: [Patentpractice] NO SOUP FOR YOU!

There you go again using technical terminology.   :)
On 9/15/2025 1:35 PM, Suzannah K. Sundby via Patentpractice wrote:
Someone please save me from responding with a reply refusing to change the status identifier and demanding that the USPTO DOES ITS FREAKING JOB.

Suzannah K. Sundby<http://www.linkedin.com/in/ssundby/> | Partner
canady + lortz LLP<http://www.canadylortz.com/>
1050 30th Street, NW
Washington, DC 20007
T: 202.486.8020
F: 202.540.8020
suzannah at canadylortz.com<mailto:suzannah at canadylortz.com>
www.canadylortz.com<http://www.canadylortz.com/>
Confidentiality Notice:  This message is being sent by or on behalf of a lawyer.  It is intended exclusively for the individual or entity to which it is addressed.  This communication may contain information that is proprietary, privileged or confidential, or otherwise legally exempt from disclosure.  If you are not the named addressee, you may not read, print, retain, copy, or disseminate this message or any part.  If you have received this message in error, please notify the sender immediately by e-mail and delete all copies of the message.

From: Suzannah K. Sundby
Sent: Monday, September 15, 2025 4:34 PM
To: Goldberg, Judi <jgoldberg at leydig.com><mailto:jgoldberg at leydig.com>; For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com><mailto:patentpractice at oppedahl-lists.com>; Randall Svihla <rsvihla at nsiplaw.com><mailto:rsvihla at nsiplaw.com>
Subject: RE: NO SOUP FOR YOU!

The person who flagged was with Legal Instruments … meaning it never got to the Examiner (as I understand)

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Suzannah K. Sundby<http://www.linkedin.com/in/ssundby/> | Partner
canady + lortz LLP<http://www.canadylortz.com/>
1050 30th Street, NW
Washington, DC 20007
T: 202.486.8020
F: 202.540.8020
suzannah at canadylortz.com<mailto:suzannah at canadylortz.com>
www.canadylortz.com<http://www.canadylortz.com/>
Confidentiality Notice:  This message is being sent by or on behalf of a lawyer.  It is intended exclusively for the individual or entity to which it is addressed.  This communication may contain information that is proprietary, privileged or confidential, or otherwise legally exempt from disclosure.  If you are not the named addressee, you may not read, print, retain, copy, or disseminate this message or any part.  If you have received this message in error, please notify the sender immediately by e-mail and delete all copies of the message.

From: Goldberg, Judi <jgoldberg at leydig.com<mailto:jgoldberg at leydig.com>>
Sent: Monday, September 15, 2025 4:31 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>; Randall Svihla <rsvihla at nsiplaw.com<mailto:rsvihla at nsiplaw.com>>
Cc: Suzannah K. Sundby <suzannah at canadylortz.com<mailto:suzannah at canadylortz.com>>
Subject: RE: NO SOUP FOR YOU!

The MPEP allows for the following identifiers.  That being said, the examiners are being much pickier.  I recently had some NPL refs in an IDS not be considered because the publisher or publisher’s location weren’t included in the cite (which I had previously only done when citing a book, not a journal article.)  It buys them more time to delay examining the application.

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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> On Behalf Of Suzannah K. Sundby via Patentpractice
Sent: Monday, September 15, 2025 3:23 PM
To: Randall Svihla <rsvihla at nsiplaw.com<mailto:rsvihla at nsiplaw.com>>; For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: Suzannah K. Sundby <suzannah at canadylortz.com<mailto:suzannah at canadylortz.com>>
Subject: Re: [Patentpractice] NO SOUP FOR YOU!

[External Email]
LIE, Terry Bryant.

Suzannah K. Sundby<http://www.linkedin.com/in/ssundby/> | Partner
canady + lortz LLP<http://www.canadylortz.com/>
1050 30th Street, NW
Washington, DC 20007
T: 202.486.8020
F: 202.540.8020
suzannah at canadylortz.com<mailto:suzannah at canadylortz.com>
www.canadylortz.com<http://www.canadylortz.com/>
Confidentiality Notice:  This message is being sent by or on behalf of a lawyer.  It is intended exclusively for the individual or entity to which it is addressed.  This communication may contain information that is proprietary, privileged or confidential, or otherwise legally exempt from disclosure.  If you are not the named addressee, you may not read, print, retain, copy, or disseminate this message or any part.  If you have received this message in error, please notify the sender immediately by e-mail and delete all copies of the message.

From: Randall Svihla <rsvihla at nsiplaw.com<mailto:rsvihla at nsiplaw.com>>
Sent: Monday, September 15, 2025 4:09 PM
To: Suzannah K. Sundby <suzannah at canadylortz.com<mailto:suzannah at canadylortz.com>>; For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Subject: RE: NO SOUP FOR YOU!

Ridiculous.  Was it signed by the Examiner, or an LIE?

From: Suzannah K. Sundby <suzannah at canadylortz.com<mailto:suzannah at canadylortz.com>>
Sent: Monday, September 15, 2025 4:08 PM
To: Randall Svihla <rsvihla at nsiplaw.com<mailto:rsvihla at nsiplaw.com>>; For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Subject: RE: NO SOUP FOR YOU!

Filed September 1, 2025.

Suzannah K. Sundby<http://www.linkedin.com/in/ssundby/> | Partner
canady + lortz LLP<http://www.canadylortz.com/>
1050 30th Street, NW
Washington, DC 20007
T: 202.486.8020
F: 202.540.8020
suzannah at canadylortz.com<mailto:suzannah at canadylortz.com>
www.canadylortz.com<http://www.canadylortz.com/>
Confidentiality Notice:  This message is being sent by or on behalf of a lawyer.  It is intended exclusively for the individual or entity to which it is addressed.  This communication may contain information that is proprietary, privileged or confidential, or otherwise legally exempt from disclosure.  If you are not the named addressee, you may not read, print, retain, copy, or disseminate this message or any part.  If you have received this message in error, please notify the sender immediately by e-mail and delete all copies of the message.

From: Randall Svihla <rsvihla at nsiplaw.com<mailto:rsvihla at nsiplaw.com>>
Sent: Monday, September 15, 2025 4:05 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: Suzannah K. Sundby <suzannah at canadylortz.com<mailto:suzannah at canadylortz.com>>
Subject: RE: NO SOUP FOR YOU!

Annoying.  When did you file a response?  It may have come up for action and the Examiner didn't want to work on it because it's the end of the fiscal year so he got it off his docket this way.

37 CFR 1.121(c)(3):

  *   (3) When claim text in clean version is required.  The text of all pending claims not being currently amended shall be presented in the claim listing in clean version, i.e., without any markings in the presentation of text.  The presentation of a clean version of any claim having the status of “original," "withdrawn" or "previously presented" will constitute an assertion that it has not been changed relative to the immediate prior version, except to omit markings that may have been present in the immediate prior version of the claims of the status of "withdrawn" or "previously presented."  Any claim added by amendment must be indicated with the status of "new" and presented in clean version, i.e., without any underlining.

MPEP 714(C):

Example of listing of claims:
Claims 1-5 (canceled)
Claim 6 (withdrawn): A process for molding a bucket.
Claim 7 (previously presented): A bucket with a handle.
Claim 8 (currently amended): A bucket with a greenblue handle.
Claim 9 (withdrawn): The process for molding a bucket of claim 6 using molten plastic material.
Claim 10 (original): The bucket of claim 8 with a wooden handle.
Claim 11 (canceled)
Claim 12 (previously presented): A bucket having a circumferential upper lip.
Claim 13 (not entered)
Claim 14 (new): A bucket with plastic sides and bottom.

  *   (E) Acceptable Alternative Status Identifiers: To prevent delays in prosecution, the Office may waive certain provisions of 37 CFR 1.121<https://www.uspto.gov/web/offices/pac/mpep/mpep-9020-appx-r.html#d0e323020> and accept alternative status identifiers not specifically set forth in 37 CFR 1.121(c)<https://www.uspto.gov/web/offices/pac/mpep/mpep-9020-appx-r.html#d0e323020>. Accordingly claim listings that include alternative status identifiers as set forth below will be accepted if the amendment otherwise complies with 37 CFR 1.121<https://www.uspto.gov/web/offices/pac/mpep/mpep-9020-appx-r.html#d0e323020>. See Acceptance of Certain Non-Compliant Amendments Under 37 CFR 1.121(c), 1296 OG 27 (July 5, 2005).
Status Identifiers Set Forth in 37 CFR 1.121(c)
Acceptable Alternatives
1. Original
Original Claim; and Originally Filed Claim
2. Currently amended
Presently amended; and Currently amended claim
3. Canceled
Canceled without prejudice; Cancel; Cancelled; Canceled herein; Previously cancelled; Canceled claim; Deleted; and Previously canceled
4. Withdrawn
Withdrawn from consideration; Withdrawn – new; Withdrawn claim; and Withdrawn – currently amended
5. Previously presented
Previously amended; Previously added; Previously submitted; and Previously presented claim
6. New
Newly added; and New claim
7. Not entered
Not entered claim
The Office may also accept additional variations of the status identifiers provided in 37 CFR 1.121(c)<https://www.uspto.gov/web/offices/pac/mpep/mpep-9020-appx-r.html#d0e323020> not listed above if an Office personnel determines that the status of the claims is accurate and clear. When accepting alternative status identifiers, the examiner is not required to correct the status identifiers using an examiner’s amendment. Applicant will not be notified and will not be required to submit a corrective compliant amendment. The examiner does not need to make a statement on the record that the alternative status identifiers have been accepted.

https://www.uspto.gov/news/og/2005/week27/patamnd.htm

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> On Behalf Of Suzannah K. Sundby via Patentpractice
Sent: Monday, September 15, 2025 3:48 PM
To: patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>
Cc: Suzannah K. Sundby <suzannah at canadylortz.com<mailto:suzannah at canadylortz.com>>
Subject: [Patentpractice] NO SOUP FOR YOU!

Got a Notice of Non-Compliant Amendment

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Suzannah K. Sundby<http://www.linkedin.com/in/ssundby/> | Partner
canady + lortz LLP<http://www.canadylortz.com/>
1050 30th Street, NW
Washington, DC 20007
T: 202.486.8020
F: 202.540.8020
suzannah at canadylortz.com<mailto:suzannah at canadylortz.com>
www.canadylortz.com<http://www.canadylortz.com/>
Confidentiality Notice:  This message is being sent by or on behalf of a lawyer.  It is intended exclusively for the individual or entity to which it is addressed.  This communication may contain information that is proprietary, privileged or confidential, or otherwise legally exempt from disclosure.  If you are not the named addressee, you may not read, print, retain, copy, or disseminate this message or any part.  If you have received this message in error, please notify the sender immediately by e-mail and delete all copies of the message.

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