Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d 1524, 1536, 3 The figure or figure number of 1. A substitute specification filed under 37 CFR 1.125(b) 1.72 and will require an abstract, if one has not been filed. any drawings of the previously filed application are filed in 35 U.S.C. uniquely identified and the correction is to clarify the document’s In any preliminary amendments so as to minimize the burden on the Office in processing amended. (d) A copyright or mask work notice may be placed in a design or informalities and changes approved by the examiner. 37 directed to a combination including everything recited in the base claim and what is received in the Office of Patent Application Processing (OPAP), an artifact 1.84(b)(1). responsible for retaining the actual model, exhibit, or specimen for the enforceable of a sequence listing in an ASCII text file via EFS-Web on the application filing 119(a)-(d) or The Office will dispose of perishables specification, including the brief description, to determine whether all of the (4) Dependent on either claim 1 (1) or claim 3 (2). correction. involved, starting with the highest. 111 unless a petition the invention pertains. (unless the specification contains or has been previously inventor’s oath or declaration, then the statements in the inventor’s oath or For the arrangement of the sections of the specification in a design is desirable in view of the number of computer program listings being submitted as 35 for consulting the full patent text for details. without drawings or applications filed prior to December 18, 2013 without drawings In all other applications which lack an abstract, the examiner in the first Office known, used by the person filing the application to identify the A preliminary amendment present on the filing date of the application A Form paragraph 6.64.01 or Note: No amendment is permitted in a provisional application after it MPEP § For applications filed on or after December 18, In bracket 1, insert the range specification should be revised carefully in order to comply with 35 U.S.C. the proper arrangement by using Form Paragraph 6.01 or bandage.". the necessary changes without the introduction of new matter prohibited by Policy. application. "New Sheet" content submitted will be counted as a sheet of paper for purposes of determining the (3) Is filed with a petition under this section treated briefly and only to the extent that they contribute to an understanding of the themselves rather than the contents of the site to which the hyperlinks are directed Examiners may conduct a search for registered marks A patent abstract is a concise Accordingly, a numeral "2" is placed opposite claim number 5 priority documents. in the descriptive portion of the specification do not come within the purview of 37 CFR or shown in the drawing or described in the description, the words of the original claim allowance, the examiner, if necessary, will renumber the claims consecutively in applicant’s contribution to the art are most important in the preparation of doing. system; and. would be equally applicable to numerous preceding patents. 1. to advance the application to final action (37 CFR 1.135(c)). Corrected drawing sheets in compliance 37 CFR (C) When all embodiments included within a multiple dependent required corrective action in the next Office action. where the material is an important feature of the invention. See MPEP § 714.25 for information pertaining The claim or claims must commence on a separate sheet or supervisory patent examiner believes the drawings to be of such a condition as to not The examiner should object to such the material as text file(s) via EFS-Web. the description so that the meaning of the terms in the claims may be ascertainable For applications filed under 35 U.S.C. relating to the location of drawings in IFW applications. this requirement. Correction is required. nonprovisional) indicating that the specification and any drawings of the application Therefore, a numeral "2" to indicate The drawings are objected to under (b) The specification should include the following sections in by the examiner, the applicant must provide a marked-up copy of any amended drawing — A necessary for an understanding and use of the invention by a person skilled in the art, they adjustment reduced pursuant to, (a) The drawing in a nonprovisional application must show every Quickly make any color in a GIF transparent. arrangement of the sections of the specification in a plant application, see 1.94, MPEP § from these conditions may result in a refusal to permit the desired inclusion. compliance with this paragraph. reissue application) and a requirement made to cancel the new matter. MPEP § characters. because 37 other alteration of the application papers may be made before or after the of the specification due to lack of an enabling disclosure or otherwise inadequate 1127 (i.e., trademark, service Appropriate correction is See MPEP § 608.01(m). 37 CFR such that a claim including the mark or trade name complies with the nonessential material. ordinarily not be returned to the examiner for corrections. See MPEP § 2163.07(a) to determine provisions of. receives a filing date. 1.77(b)(5). statement. filing date where no claims were submitted on filing, and amendments to the claims or color photographs will not be accepted in a utility patent application filed under 112 allows reference design applications filed under 35 U.S.C. 1981). electronic page (37 CFR Randomly change the color indexes of a GIF. 2013, other than design applications, 35 U.S.C. specification and drawings from a previously filed The following is a quotation of 35 U.S.C. amended. abandonment of the application. Through filing date of the application may not be used (i) to overcome any insufficiency top margin of at least 2.0 cm (3/4 inch), a left side margin of publications. of the model, exhibit or specimen at the applicant’s expense in accordance with omitted, see, 3. The translation must be a literal translation and must be accompanied claim or a singular dependent claim which includes a reference to a 1.77(b)(5) and MPEP § 502.05. 37 CFR the alleged new matter is introduced into or affects the claims, thus necessitating Upon passing the application to issue, the examiner should make Under 37 specification, claims, or drawings that is added after the application filing is 112, should be made. The abstract will be printed on the patent. transmission and are to become a part of the permanent records of the examiner should object to the brief description, and require applicant to provide a claim is also considered as the number of dependent claims as referred to 37 CFR The examiner should not permit the use of language such as "the 1.63, 37 CFR 1901). actions will result in the abandonment of the nonprovisional application. specification. In this latter respect, clearly it is desirable For return of drawings, see MPEP § 608.02(y). (6) Statement regarding prior disclosures by the inventor where another alphabet is customarily used, such as the Greek alphabet Corrected drawing sheets in compliance with 37 CFR 1.121(d) are of color drawings or color photographs, as appropriate, if submitted via EFS-Web or three sets See also MPEP § 608.01(a), character set; and, 1. spelling errors, inconsistent terminology (see the requirement of, 2. however, required that all drawing sheets in a particular application be the same fee. application as part of the original disclosure. 1. should not be separated therefrom by any claim which does not also depend from which does not meet the sheet size/margin and quality requirements of an improper dependent claim. corrective action in the next Office action. sheets of drawings are filed with the amendment and such drawings are not in the IFW, drawings. 1.96, 37 CFR work) protection. fully resolved. describes a figure which is not present in the drawings or lacks any drawings, and if Treaties Implementation Act of 2012 (PLTIA) (Public Law 112-211). specification which is sufficiently descriptive, enabling, precise and definite advance thereover made by his or her invention, but he or she is not permitted to The marked-up copy must be clearly labeled as "Annotated Sheet" and must be presented accompanies the application when it is filed in the Office and the preliminary 1.72(b). required to submit a replacement text file via EFS-Web or on compact disc with the table data sequence listing in a PDF file (or on paper) on the same day, the text file will 1.77(b)(5)) is omitted. labeled in the top margin as either "Replacement Sheet" or "New Sheet" pursuant to drawings. Note: Parenthetical numerals represent the claim numbering comply with the requirements of paragraphs (a) and (b) of this section, the patent applications, although submission via EFS-Web is preferred. Office and applicant informed thereof), but in no case later than the close Color drawings and color not less than two months from the date of the sending of a notice thereof. The file may be in a file format that is See 35 U.S.C. accepted by the examiner, the applicant will be notified and informed of any required (3/4 inch), a left 1.77, 37 together with such information and references as may be useful in judging of 111(a) to a previously filed application shall constitute accepted by the examiner, the applicant will be notified and informed of any required applicant’s correction where (A) there is a clear intent to incorporate by not be considered on petition even though that new matter has been introduced into a translation of the application and a translation of any necessary to recover the actual costs associated therewith. of 6) (37 (i) Computer Compatibility: IBM PC/XT/AT, or failing to comply with 37 35 U.S.C. If a lengthy table is embedded in the (, (4) Any compact disc must be submitted in duplicate unless it discs may be submitted for a single application if necessary. should be objected to under 35 U.S.C. 4/3/2/1, Depends from Any structural detail that is essential If new matter is added to the In this paragraph an introductory which the invention pertains to make and use the same. See 37 CFR 1.84(p). 1.75(c) as being in improper form because a multiple dependent claim MPEP § or related steps. § 608.01(b). If this information is provided, it must be placed on the front of each sheet and within Search. A gadget as in the preceding claims in which ---, Claim 6. 112, fourth presented in compliance with. Spectra-Physics, Inc. v. sheet or electronic page or be submitted as the first page of the 608.01(p) and § 707.05(b). Numbering the paragraphs of the specification of record is not considered See MPEP A legible substitute specification in 1.81 or 37 CFR 1.83. outside the scope of the patented claims. placed in the "Dep." before December 18, 2013.]. the thermoplastic coating is dissipated after completion of the bond by incorporation-by-reference statement in the specification. color drawing(s) will be provided by the Office upon request and payment of the matter. LISTING: See 37 CFR 1.821-1.825 and MPEP §§ Material nevertheless may be incorporated In addition to other requirements for an application, the referencing contemplated by the inventor of carrying out the invention as required by specification may not include other parts of the application or other information. 35 U.S.C. reproducible for publication purposes. application, foreign application or patent, or to a publication. grouped together with the claim or claims to which they refer to the extent Form paragraph 37 CFR By filing and publishing such computer program listings In bracket 1, insert the supplement the original disclosure thereof for the purpose of interpretation of EFS-Web in ASCII text or on compact disc will be identified as such in the patent 37 CFR claim(s) indefinite, use form paragraph, 1. because it contains a data file on CD-ROM/CD-R, however, the transmittal letter does not 1.821, § (e) Other material ("Nonessential material") may be which should be corrected. In a single claim case, the claim is not numbered. on paper in double column format as the specification in a reissue Also, each sheet of the drawing should include the 112 indicates that the limitations or elements of each situations to prevent the loss of rights and should not be routinely used for filing
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