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Bernstein, Hiram

Bernstein, Hiram

From: Spar, Bob

Sent: Friday November 06, 1998 5:26 PM


Cc: Bernstein, Hiram

Subject: RE: ANPR

Thank you for your comments. They shall be considered along with all other comments that are received.

  • -Original Message
  • From: [

    Sent: Friday, October 30, 1998 2:41 PM

    To: Spar, Bob


    Subject: ANPR

    Dear Mr. Spar:

  • Thank you for your presentation in San Diego. It was very interesting.
    Re: Proposed Change No. 4
  • You don't need a this rule to limit excessive claiming. The Examiners are

    already exercising their discretion in this regard by requiring that the number of claims be limited when there is a "subject- matter' reason to do so, rather an arbitrary numercial reason. There are cases when more than 40 claims should be included to include all of the species. Also, what happens when after reviewing the art cited in the first office action, it is necessary to redraft the claims in such a manner than one exceeds the arbitrary numerical limit? [Spar,Bob] Unless an exception is given in response to a petition, excess claims will not be considered.

    Re: Proposed Change No. 13

    The proposal to number each paragraph will create more problems than are

    otherwise solved. Sometimes, it is appropriate to insert an increased number of paragraphs by amendment, such as to discuss additional prior art in the Background or to summarize additional independent claims in the Summary of the Invention. Also, it is sometimes appropriate to delete some of the paragraphs as various subject matter is deleted, such as for a divisional application.

    While the broad premise of the proposal is good, replacement pages should be required, as in European and other foreign practice, rather than replacement paragraphs. Replacement pages are easy to provide since most applications are now prepared on word processors; whereas numbering of paragraph and renumbering thereof when paragraphs are added or deleted would be unduly burdensome.

    Edward W. Callan

    3033 Science Park Road

    San Diego, CA 92121



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