I've received a Notice of Allowance for claims contained in an examiner's amendment. The claims aren't exactly as I'd want them, but I feel my options are limited. I know I can file a continuation before issuance, but I also heard that some type of formal response to the amendment should be filed. Can anyone elaborate on what this response should look like?

1 Answer 1


If the changes you want would be considered by the examiner as not affecting patentability you could use a rule 312 amendment. What seems off is that usually an examiner's amendment is only made after getting your Ok.

  • Thanks for the reply. I know I can submit an amendment, but what about simply submitting a response? Examiner's amendments are normally the result of a negotiation and I suspect they are rarely everything an applicant believes they are entitled to. Why else would continuation applications exist?
    – NofA
    Commented May 28, 2013 at 19:18
  • 2
    If you negotiated it but you now think you have chance at fighting for more, that would be exactly when a continuation would be used. If you can live with the wording you negotiated but the examiner has written reasons for allowance in the record that you do not agree with then that is a good situation for a statement. If you changed your mind about the compromise and do not want to file a continuation then you probably need to file an RCE. This opens the case wide up and you may loose even what you have now. To get the claim wording to change there will to be an amendment or a new filing.
    – George White
    Commented May 28, 2013 at 20:39
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    I can't imagine that filing a statement just saying you think you deserved more will lead to anything good.
    – George White
    Commented May 28, 2013 at 20:53
  • I think this is what I have been trying to understand: "Comments on an examiner’s statement of reasons for allowance". Page 4: aipla.org/learningcenter/library/papers/bootcamps/…
    – NofA
    Commented May 30, 2013 at 19:49
  • Yes, that aipla paper seems relevant to your question. Commented Jul 3, 2013 at 15:32

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