[Patentpractice] NO SOUP FOR YOU!
Louise Sherikar
louise.sherikar at gmail.com
Tue Sep 16 00:24:27 UTC 2025
I once got a notice of non-compliant amendment for an amendment that went
something like this.
Claims 1-18 (canceled)
Claim 19 (currently amended) A device comprising:
a top;
*a middle; and *
a bottom.
Claim 20 (cancelled)
Turns out the LIE wanted me to list all the canceled claims separately,
like this:
claim 1 (canceled)
claim 2 (canceled)
claim 3 (canceled)
claim 4 (canceled), etc.
Very stupid.
Louise Sherikar
Registered Patent Agent
On Mon, Sep 15, 2025 at 1:10 PM Randall Svihla via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:
> Ridiculous. Was it signed by the Examiner, or an LIE?
>
>
>
>
>
> *From:* Suzannah K. Sundby <suzannah at canadylortz.com>
> *Sent:* Monday, September 15, 2025 4:08 PM
> *To:* Randall Svihla <rsvihla at nsiplaw.com>; For patent practitioners.
> This is not for laypersons to seek legal advice. <
> 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
>
> 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>
> *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>
> *Cc:* Suzannah K. Sundby <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 green*blue* 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> *On
> Behalf Of *Suzannah K. Sundby via Patentpractice
> *Sent:* Monday, September 15, 2025 3:48 PM
> *To:* patentpractice at oppedahl-lists.com
> *Cc:* Suzannah K. Sundby <suzannah at canadylortz.com>
> *Subject:* [Patentpractice] NO SOUP FOR YOU!
>
>
>
> Got a Notice of Non-Compliant Amendment
>
>
>
>
>
>
>
> 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
>
> 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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>
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>
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