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Messages - manngraf

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and thank you very much Brad for your kind forum and your kind advises, with your kind help I got allowance for my first patent application and trying now to go forward with my second patent application.

I had several independent claims in the original application, and after the restriction requirement, I amended two independent claims into method claims like:

1. A method for generating an electromagnetic signal of ... frequency with modulated amplitude, the method comprising: ...


14. A method of ... measurement, the method comprising: ...

with same key idea stated after "whereby" in both independent claims. I traversed to USPTO that if someone introduces this kind of dual band signal from the method of claim 1, it is evident that it is to be used in ... measurement applications as it is written in the claim 14.

I cannot write generic claim that cover both independent claims because some prior art.

I applied for "First Action Interview Program" and now got answer from USPTO that only the first set of independent claims were searched, actually it was rejected on 112, but examiner wrote me the alternatives for the allowance.

I is extremely important for me to have the second independent claim be patented, and I hear about so called "subspaces", rejointment, and additional search (even I am sure that no additional search is needed).

Please, advice me what kind of options are available for me, can I pay for the additional search, or somehow argue that the claims are linked?

Thank you!



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.



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!



Dear Brad,

thank you very much for your kind answer!

The main reason to redraw the claims is to participate in the First Action Interview Pilot Program.

The second reason - I got first action from EPO and it seems that EPO examiner completely ignored my specification (60 pages) and drawing (30 pages), and just read claims. Since the claims were not perfect, I got negative answer that my invention is not unique, and examiner reviewed only 3 claims (including dependent) considered other claims as different invention(s).

Right now I am writing the answer to EPO with the next set of claims that restrict my application to one invention and worrying that USPTO can behave similarly.




first thank you very much Brad for this very informative forum and your kind answers!

Please, let me ask my next question.

Almost one year ago I submitted 3 NPAs. in November 2018 all my patent applications were published (I can share publication numbers in PM). First action is intended for 12/2019.

Right now I figured out that one my NPA contains several inventions. Indeed this NPA have 6 independent and 48 total claims. I would like to divide claims into 2-3 NPAs with no changes in specification and figures. In addition, I figured out that some claims are written too broad.

I am intending to have <20 claims with less then 3 independent per each application, so that I can get a review from USPTO before the first action.

There is no changes in the patent/drawing, I have just another set of claims.

So, it is clear that I should make divisional.

Please, advice how to do with the claims. Is there any special procedure to

1. remove claims
2. substitute claims.

Thank you!

Dear Bred,

first thank you very much for your kind previous answers! You helped me a lot and I submitted 3 NPA's according to your suggestions.

I have some questions, please, may I kindly ask you to help with them:

1. I submitted 3 NPA's (within one hour) with priorities on the same PPA's of mine filled last year, said NPA's all based on the same mathematical theory, but bring me into 3 different inventions in a real technical world, i.e. in chemistry, in medicine and in semiconductor manufacturing. Here, I have large portion of text (ca. 50 pages from 70) are identical over all NPAs with different "Background", "Claims", and embodiment description.

I did not make said NPA's as divisional. Practically, I would like to succeed with manufacturing all 3 inventions, but life may be not so easy...

What's happen if USPTO consider that the inventions listed in claims may overlap? I tried to escape this situation, but being a lay person may expect this situation.

Please, help me to be informed when is my last chance (before first action or when exactly) when I can declare them as divisional if needed and do not lost them them because said NPAs may some how be considered to infringe each other?

2. I have an additional information, i.e.
2.a. laboratory journal with detailed pictures of working devices and measurements;
2.b. list of several dozen US Universities who pre-ordered and will get all three inventions implemented in a device;
2.c. indeed in few weeks I will also have reviews from them;
2.d. I can publish scientific article about these inventions.

I hear that said additional information may help to improve overall opinion about my inventions and prosecute it faster. If yes, how to share this information with USPTO? I suppose that IDS is not a right place to put it into, am I right?

Thank you!



Patent Questions and Advice / Two NPAs on one PPA
« on: April 08, 2018, 03:44:30 PM »

I have PPA (indeed 3 for the same topic) and it is time to submit NPA. Right now I figured out that my PPAs consist on 2 inventions, however they are very close to each other. So, the invention is based on new scientific theory, and lead to two nice applications in chemistry and in medicine.

So, several claims refer to medical application and some claims - to chemical application, however, to demonstrate that the invention is working, I wrote about 60 pages of theory, proofs, and related examples (I have already working prototype) and this part is common for both NPAs.

Hence, both NPA have
* different claims,
* different background,

however both NPA have large part of DETAILED DESCRIPTION and FIGURES.

Actually, in PPAs everything was written as one text.

Please, advise should I use some additional forms to mark that these NPAs are somehow related, like divisional applications, or I can just submit as it is? Is it beneficial (I mean I hear that I should keep both NPAs in the same hands, however, in future I am planning to manufacture chemical part (I am doing already it) and find right partner to make medical part.

Thank you!



Dear Brad,

thank you very much for your kind information!

Please, may I follow up my question, please, advice is it correct that:

if I submit now a lot of additional information in one additional PPA, write corresponding claims, take this PPA as 4-th priority for my NPA, but do not place claims form 4-th PPA into NPA, I will let all said additional information for public, and be able to save myself from others to apply patents for similar embodiments that are not listed in NPA. The reason - I am worried to place a lot into NPA because the NPA may look too heavy so USPTO force me to divide NPA into several applications that I am not yet ready to financially support.

Thank you!




I have 3 PPAs recently submitted and about to start PCT and NPA over them. All PPAs written such a way that all formulas, figures numerations and numbers on figures are unique over all 3 PPAs, however claims and paragraphs on each PPAs start from the begin. 3 PPAs in total have ca. 150 pages, 40 figures and 120 claims.

My goal to place only few (most important) information from all 3 PPAs into NPA and PCT (to get patent protection) and rest - to publish (preferably some way in USPTO) so that nobody else can patent the rest, but everybody may use it.

If I write NPA such a way that it contains some parts of all my 3 PPAs (paragraph by paragraph), I suppose that USPTO do not like to check all my 150 pages of 3 PPA about priority and I will lost priorities of my 3 PPAs. Since some information from my PPAs are already published in scientific journals (directly after I got confirmations from USPTO) I will lost a possibility to patent it abroad...

Please, advice:

1. can I somehow submit additional information for USPTO like a list of paragraphs and claims of PPA that match to corresponding paragraphs and claims of NPA and what's happen with the priority?

2. if I submit PCT with only circa 30% of information of PPAs, is it correct that the rest (situated in PPAs) will be never published and I will lost it, or PCT is published together with all PPAs referenced?

Thank you!



Dear Brad,

thank you for your kind answer. You helped me to resolve all my questions!

There were very helpful discussions over both hotlines.

BTW, may be somebody will need this information: to certify the signature for digital certification one can use any notary even outside of US or from US embassy.

Edit (Oct. 14): after your kind advice and my call I almost immediately get confirmation letter by the post. Thank you very much, Brad!!!




recently I submitted 2 PPAs to USPTO electronically with micro-entity status. After the first submission (by the end of May) I got a letter within 2 weeks, however, I am still waiting for a confirmation for the second submission that I did at Aug 2017.

I have both US62,5xx,xxx numbers from efilling, however, I did not yet registered for USPTO to fill electronically.

And finally I am applying from the abroad, however I have US LLC, but I set corresponding address as german one during efilling.

Please, advice me, if possible:

1. how long time can USPTO send the confirmation letter,
2. what I can do if the letter were lost on the way from USPTO to me.

In parallel I am planning to apply for registered user of USPTO's Electronic Filing System (EFS-Web). It is clear for me how to Obtain a Customer Number and associate patent applications with my said customer number, but I should apply for a Digital Certificate.

Please, advice me how to get Digital Certificate if I am situating in Germany and would like to escape oversea travel for digital certification.

Thank you in advance!



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