Patent and Invention Help Forum

Patent and Inventing Discussion => Patent Questions and Advice => Topic started by: manngraf on November 21, 2019, 06:09:17 AM

Title: Can I change claims after office action (Electron/Restrictions)
Post by: manngraf on November 21, 2019, 06:09:17 AM
Dear Brad,
dear All,

please, advice can I change (slightly) my claims right now. I got the Office Action where I should restrict my application to one invention, i.e. all my claims marked as:
Claim(s) 1-48 are subject to restriction and/or election requirement.

I understand that 2 inventions are packed in this application and I want to restrict this application to one invention. However, I want to change a little bit claims for the invention because some of them are written too broad and I suppose that they will be rejected, for example, I wrote

An apparatus comprising of...

and wish to change it at:

An apparatus for generating modulated RF-signal comprising of:...

It would be also very nice if I can change one independent claim to the dependent one, because I can remove a problem with two inventions.

Is it possible to do this right now, or I should wait for the first action and then send such modifications?

Thank you!

Sincerely,

Manngraf
Title: Re: Can I change claims after office action (Electron/Restrictions)
Post by: Brad on November 21, 2019, 09:20:06 AM
Yes you are allowed to make wording changes to your claims and you can file those amended claims when you submit your response to the restriction requirement.
Title: Re: Can I change claims after office action (Electron/Restrictions)
Post by: manngraf on November 22, 2019, 03:49:10 AM
Dear Brad,

thank you very much for your kind answer! It is really good news for me, I can save one iteration with USPTO regarding claim modifications.

Sincerely,

Manngraf