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I forgot to number my claims and they asked for the required items (below).

Required items: Replacement claim(s) commencing on a separate sheet in compliance with 37 CFR 1.75(h) and 1.121 is required. Claims must be consecutively numbered and the same claim number cannot be used for more than one claim. See 37 CFR 1.126.

My Response:

  1. I added [Claim 1] and [Claim 2] to the start of each claim paragraph.
  2. I sent a PDF of the corrected claims page. It was a single page and the only changes were the added numbers.
  3. The PDF was sent through EFS-Web.

Notice of Incomplete Reply: I received this notice a few days later and it stated the exact same problem, (see above).

My Questions:

  1. Could the problem be [Claim 1] should be [0001]? Although I've seen [Claim 1] on other applications online.
  2. The original request did not mention needing any sort of "Amendments to the Specification" document but I've seen something like this mentioned on this website. Could this be the problem? What/Where is this requirement stated?
  3. If it was a lack of "Amendments to the Specification" document wouldn't it have also stated that this was another requirement in addition to the original numbering problem?

Thanks for all your help!

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  • Filing as a pro se, this is just an early mysterious encounter you will have with the rules and laws relating to patent prosecution. It will get harder and do not expect it to be entirely logical. I recommend Patent it Yourself by Pressman
    – George White
    Aug 11, 2021 at 21:43

1 Answer 1

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See MPEP section on manner of making amendments.

There is some formality in making amendments. The USPTO provides an example. Among other things they must be signed. If it isn't signed properly it didn't happen. Also claims are sentences, not paragraphs, even though they might be long.

One paragraph in the MPEPis -

c) Claims. Amendments to a claim must be made by rewriting the entire claim with all changes (e.g., additions and deletions) as indicated in this subsection, except when the claim is being canceled. Each amendment document that includes a change to an existing claim, cancellation of an existing claim or addition of a new claim, must include a complete listing of all claims ever presented, including the text of all pending and withdrawn claims, in the application. The claim listing, including the text of the claims, in the amendment document will serve to replace all prior versions of the claims, in the application. In the claim listing, the status of every claim must be indicated after its claim number by using one of the following identifiers in a parenthetical expression: (Original), (Currently amended), (Canceled), (Withdrawn), (Previously presented), (New), and (Not entered).

Note the mention of markings. You need to follow that process of indicating changes.

Regarding the substance of the change - If you look at any patent or application you will see simple numbers followed by a period, preceding each claim. Not "[Claim 1]”, just “1.”

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