¶ 7.104.02 Requirement for Information, Rescission of Statement Under 37 CFR 1.55 or 1.78
Applicant submitted a rescission of the prior-filed 1.55 /1.78 statement which indicated that the application contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013. In order for the examiner to properly consider patentability of the claimed invention, additional information regarding this issue is required as follows: [1]
Applicant is reminded that failure to fully reply to this requirement for information will result in a holding of abandonment.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
2. This form paragraph should only be used in an application filed on or after March 16, 2013, where the applicant rescinded a statement pursuant to 37 CFR 1.55 or 1.78 and clarification on the reasoning why pre-AIA law applies is needed.
3. Information sought should be restricted to that which is reasonably necessary for the examiner to render a decision on patentability.
4. In bracket 1, insert the information that is sought from the applicant.
5. A two month time period should be set by the examiner for reply to the requirement unless it is part of an Office action having a shortened statutory period (SSP), in which case the period for reply will apply also to the requirement.