[Patentpractice] NO SOUP FOR YOU!
Jeffrey Semprebon
jesemprebon at gmail.com
Tue Sep 16 02:35:03 UTC 2025
37 CFR 1.121(c)(1):
Claim listing. All of the claims presented in a claim listing shall be
presented in ascending numerical order. *Consecutive claims having the same
status of “canceled” or “not entered” may be aggregated into one statement
(e.g., Claims 1–5 (canceled))*. The claim listing shall commence on a
separate sheet of the amendment document and the sheet(s) that contain the
text of any part of the claims shall not contain any other part of the
amendment.
-Jeff
Jeffrey E. Semprebon
Registered Patent Agent (mechanical) looking for remote work
jesemprebon at gmail.com
7 Bates Alley
Claremont, New Hampshire 03743
On Mon, Sep 15, 2025 at 8:26 PM Louise Sherikar via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:
> 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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>> Patentpractice at oppedahl-lists.com
>>
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>>
> --
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>
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