RCE - Omission of antecedent

[w***@aol.com]

After filing for an RCE, I realized that I have inadvertently omitted
the antecedent of an element in an IC. It is obvious and does not
alter the scope or semantic of the claim.

Should I try to correct it, if that's possible, or leave it until the
examiner flags it?

Thank you in advance ...

[David Kiewit]

In the US RCEs get filed after 2 rounds of examination. If the antecedence
issue hasn't been raised by the examiner in either of the prior rounds, I'd
wonder about whether you're introducing new matter. Obvious new matter can
be new matter. New matter that, from one viewpoint, arguably doesn't alter
the scope of the claims can be new matter. New matter should get you a final
rejection in the next office action.

If you've got an argument that your new terminology is NOT new matter (e.g.,
you've introduced the term by incorporation by reference from an earlier US
patent), you could put that argument in a supplementary amendment that is
filed BEFORE the examiner gets to your case.

Dave Kiewit
www.patent-faq.com

Post by w***@aol.com
After filing for an RCE, I realized that I have inadvertently omitted
the antecedent of an element in an IC. It is obvious and does not
alter the scope or semantic of the claim.
Should I try to correct it, if that's possible, or leave it until the
examiner flags it?
Thank you in advance ...