[Patentpractice] NO SOUP FOR YOU!

Tue Sep 16 02:38:30 UTC 2025

OOPS!!!

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Jeffrey Semprebon via Patentpractice
Sent: Monday, September 15, 2025 10:35 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Jeffrey Semprebon <jesemprebon at gmail.com>
Subject: Re: [Patentpractice] NO SOUP FOR YOU!

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<mailto: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<mailto: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<mailto:patentpractice at oppedahl-lists.com>> wrote:
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

[cid:image001.png at 01DC2691.74C986F0]

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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