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amendments to the application

Following are some details concerning amendments to the application: The applicant may amend before or after the first examination and action as specified in the rules, or when and as specifically required by the examiner.

After final rejection or action, amendments may be made canceling claims or complying with any requirement of form which has been made in an Office action. The admission of any such amendment or its refusal, and any proceedings relative thereto, shall not operate to relieve the application from its condition as subject to appeal or to save it from abandonment. If amendments touching the merits of the application are presented after final rejection, or after appeal has been taken, or when such amendment might not otherwise be proper, they may be admitted upon a showing of good and sufficient reasons why they are necessary and were not earlier presented.

No amendment can be made as a matter of right in appealed cases. After decision on appeal, amendments can only be made as provided in the rules.

The specifications, claims, and drawing must be amended and revised when required, to correct inaccuracies of description and definition or unnecessary words, and to provide substantial correspondence between the claims, the description, and the drawing. All amendments of the drawings or specifications, and all additions thereto must not include new matter beyond the original disclosure. Matter not found in either, involving a departure from or an addition to the original disclosure, cannot be added to the application even though supported by a supplemental oath or declaration, and can be shown or claimed only in a separate application.

Amendments to the specification must be made by the submission of clean new or replacement paragraph(s), section(s), specification, or claim(s). This practice will provide a specification (including claims) in clean, or substantially clean, form that can be effectively captured and converted by optical character recognition (OCR) scanning during the patent printing process. This practice requires applicant to provide, in addition to the clean version of a replacement paragraph/section/claim, a marked-up version using applicant’s choice of a conventional marking system to indicate the changes, which will aid the examiner in identifying the changes that have been made. The marked-up version must be based on the previous version and indicate (by markings) how the previous version has been modified to produce the clean version submitted in the current amendment. The term “previous version” means the version of record in the application as originally filed or from a previously entered amendment. In addition, when presenting new or amended claims, the applicant must point out how they avoid any reference or ground rejection of record, which may be pertinent, in a remarks/arguments section.

The following format is suggested in an amendment paper: (1) a clean version of each replacement paragraph/section/claim with clear instructions for entry, (2) starting on a separate page, any remarks/arguments (37 CFR 1.111 and MPEP 714), and (3) starting on a separate page, a marked-up version entitled “Version with markings to show changes made.”

No change in the drawing may be made except by permission of the U.S. Patent Office. Changes in the construction shown in any drawing may be made only by submitting new drawings. A sketch in permanent ink showing proposed changes, to become part of the record, must be filed for approval by the U.S. Patent Office before the new drawings are filed. The paper requesting amendments to the drawing should be separate from other papers.

The original numbering of the claims must be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered. When claims are added by amendment or substituted for canceled claims, they must be numbered by the applicant consecutively beginning with the number next following the highest numbered claim previously presented. When the application is ready for allowance, the examiner, if necessary, will renumber the claims consecutively in the order in which they appear or in such order as may have been requested by applicant.


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