Response to Notice to file corrected application papers

Question

An applicant has been asked to submit a substitute specification in compliance with 37 CFR 1.52, 1.121(b)(3) and 1.125. The amendments are made to brief description of drawings, detailed description and drawings. No new subject matter has been added.

I want to understand as to what the response sheet should contain in filing a response to notice to file corrected application papers.

The usual format one would follow is:-

Dear Commissioner: This paper responds to the notice dated January XX, 20XX which is attached below:

In response to the notice I have carried out the following:

• Amendments to the Specification begin on page 2 of this paper.

• Amendments to the Drawings begin on page 9 of this paper.

• Remarks/Arguments begin on page 11 of this paper.

My questions are:

1. Under the heading "Amendments to the Specification begin on page 2 of this paper", should the applicant just mention the amended paragraph numbers or show the complete amended paragraphs? I'm asking this because the applicant will anyway be submitting the substitute specification which includes marked version and clean version.

2. Should the response document include the marked version, clean version of the specification and replacement sheets of drawings? or should the response document,the marked version, clean version of the specification and replacement sheets of drawings be made as separate documents?

If someone can provide me a sample response document or link to some website covering the above mentioned issues, it would be helpful.

Answer 1

Regarding your questions:

1. Under the heading "Amendments to the Specification begin on page 2 of this paper", should the applicant just mention the amended paragraph numbers or show the complete amended paragraphs? I'm asking this because the applicant will anyway be submitting the substitute specification which includes marked version and clean version.

It is okay to be brief. The below excerpt is fine as long as both the marked up and clean versions are submitted.

AMENDMENTS TO THE SPECIFICATION

Please amend the specification as follows:

A substitute specification is submitted herein for consideration by the Office. The substitute specification includes no new matter.

The remarks section can then comment on the specific changes made to the specification and the drawings and why the pending objections should be withdrawn.

2. Should the response document include the marked version, clean version of the specification and replacement sheets of drawings? or should the response document,the marked version, clean version of the specification and replacement sheets of drawings be made as separate documents?

The response as a whole should include all of these, but they can be separate documents within the entire response. Only the "transmittal" letter needs to have the application caption. The specification copies should include just the specification itself along with a header/footer showing page numbers, application number, and docket number (if you have one). If you are uploading via EFS web, it is okay to upload several different PDF documents. If you are filing a paper response, simply include all of the documents together as one packet or bundle.

Answer 2

MPEP 714 "Amendments, Applicant’s Action" has some guideline to the amendment. The guideline reads

Where paragraph numbering has been included in an application as provided in 37 CFR 1.52(b)(6), applicants can easily refer to a specific paragraph by number when presenting an amendment.

but it doesn't state that paragraph number should be used.

Regarding question #1, a simple answer would be, "when in doubt, just copy". You can search USPTO PAIR to see how other people submit amendment.

I checked a few and replicated some examples below: (Note: Stack Exchange does allow underline, so all underlined text are converted to italic)

Amendement to the Specification

Please replace the section heading titled "CROSS REFERENCE TO RELATED APPLICATION" and the paragraph on page 1, line 10-13 of the specification as filed with the following heading and paragraph:

-- CROSS REFERENCE TO RELATED APPLICATION APPLICATIONS

The present application is a continuation application of U.S. Patent Application Serial No. 12/xxx,xxx titled "FOO BAR" filed by Kenobi Obi Wan on December 1, 200x, which is a continuation application of … the entire content of each of which are hereby incorporated by reference herein.--

and

AMENDMENTS TO SPECIFICATION:

On page 2, line 2-6, please amend the application as follows:

Lorem ipsum dolor sit amet, consectetur adipiscing elit, sed do eiusmod tempor incididunt.

and internally, we have an amendment sheet that looks like this:

SPECIFICATION AMENDMENTS

Kindly amend the original filed specification as follows:

(a) Please replace the paragraph/section beginning at page 3, line 6, with the following rewritten paragraph:

"In order to achieve the above object, a device includes a housing husing and some electronics. The housing is made of metal."

(b) Please add the paragraph/section beginning at page 5, line 8, with the following paragraph:

“Fig. 6 is a perspective view of another embodiment according to the present invention.”

In all examples I've seen, paragraph numbers are used.

I can't answer your question (b)