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(Clarifying with more detail): With the original application in prosecution with multiple rejections to be resolved, is there an advantage of filing a Continuation application with the same specs but a substantially different set of claims, as compared to just canceling a substantial portion of original claims and resubmitting as original application with significant claims revisions?

(I have been advised to consider this, but it's not yet clear to me what the advantage is.)


CORRECTION: I was one word off, causing some confusion. "resubmitting as original application with significant claims revisions"

should have been:

"resubmitting as amended application with significant claims revisions."

In other words, in my case, an RCE (Request for Continued Examination) because it's already had 2 O.A.'s.


I can understand that if it's believed there's a strong chance of getting the first application through, and there's a opening seen for submitting a different set of claims that cover the invention from a very different angle, then I see how that could be an advantage.

  • I think you can change the description in, at least a US, continuation while keeping some of the priority, but I'd like to see an answer by someone more experienced because I don't know all the traps there. Would you consider doing that or do you want to change only the claims? – DonQuiKong Jan 10 '18 at 8:16
  • The intention was a different set of claims that might have a better chance to overcome existing rejections, but using original specifications. I had thought the specs must remain unchanged but not sure about that. Will have to research the rules. – Charles Jan 10 '18 at 21:38
  • I may have a similar, pending issue regarding "utility" of the invention, where, if we can't make it though on the first review (b/c they are game mechanics), I'm guessing I'd have to move a utility function of the mechanics, discussed but not claimed, into the formal claims. (My attorney advised that alternately, I could always file a continuation if that particular use turned out to be sought after in the industry, as it efficiently solves a persistent, general problem.) So I'll be very interested in an answer to this question. Thanks for asking! – DukeZhou Jan 11 '18 at 21:32
  • Are you talking about resubmitting or changing the claims in prosecution but keeping the same application and filing date? – DonQuiKong Jan 16 '18 at 20:03
  • Yes, changing claims but keeping specifications. But at this point the changes in mind are really just wording revisions, not claims on something different. – Charles Jan 16 '18 at 21:00
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You do not suggest adding new matter in either scenario. In that case it is infinitely better to file the new application as a continuation of the first application. Designating it as a continuation basically means you are claiming priority from the previous application. Without that priority, anything that came out between the filing of the first and the filing of the second application is fair game to use as prior art against the second application. If enough time has past, the first application itself might be prior art against the second application! In a continuation application the specification is usually identical to the parent application but that is not a rule. The rule is that the specification of the second application cannot add new matter and the claims of the second application must be supported by the specification of the first application.

EDIT

A third option, that I'm not sure you were asking about, is to cancel most or all of the claims in the present application and amend-in a completely different claim set. This is often done if the initial claim set has turned out to be indefinite and confusingly worded or the examiner has turned up art that is very on-target. If you do that, the examiner can push back and state that the new claims cover a different invention or different species of the invention of the initial claims and that you have already effectively made an election by initial presentation. If the new claims are directed to an entirely different aspect of disclosed subject matter, this is very likely.

  • I (and I think everyone) would certainly agree that filing a continuation is better than filing a new application, for exactly the reasons you note. However, I'm not sure you've touched on why a continuation is better than revising the claims in the existing application, which seems to be the thrust of the question. – Maca Jan 16 '18 at 22:33
  • I don't think that was his question - his alternatives were "filing a Continuation application with the same specs but a substantially different set of claims" as compared to "canceling a substantial portion of original claims and resubmitting as original application ". NOTE - "resubmitting as an original application". His use of the word canceling does make the question less precise so I will edit my answer to cover that third case. – George White Jan 16 '18 at 23:55
  • Ah, I can see your interpretation now: I had just focused on "canceling the claims". I've asked that the question be clarified. But your answer covers both cases now anyway, so it's probably moot. – Maca Jan 16 '18 at 23:56
  • I just clarified the question's wording. (Would have been better to ask about pros/cons of a Continuation vs. a Request for Continued Examination.) – Charles Jan 17 '18 at 2:16

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