If someone can provide me a sample response document or link to some website covering the above mentioned issues, it would be helpful.
asked Mar 3, 2016 at 11:15 756 5 5 silver badges 14 14 bronze badgesRegarding your questions:
1. Under the heading "Amendments to the Specification begin on page 2 of this paper", should the applicant just mention the amended paragraph numbers or show the complete amended paragraphs? I'm asking this because the applicant will anyway be submitting the substitute specification which includes marked version and clean version.
It is okay to be brief. The below excerpt is fine as long as both the marked up and clean versions are submitted.
AMENDMENTS TO THE SPECIFICATION
Please amend the specification as follows:
A substitute specification is submitted herein for consideration by the Office. The substitute specification includes no new matter.
The remarks section can then comment on the specific changes made to the specification and the drawings and why the pending objections should be withdrawn.
2. Should the response document include the marked version, clean version of the specification and replacement sheets of drawings? or should the response document,the marked version, clean version of the specification and replacement sheets of drawings be made as separate documents?
The response as a whole should include all of these, but they can be separate documents within the entire response. Only the "transmittal" letter needs to have the application caption. The specification copies should include just the specification itself along with a header/footer showing page numbers, application number, and docket number (if you have one). If you are uploading via EFS web, it is okay to upload several different PDF documents. If you are filing a paper response, simply include all of the documents together as one packet or bundle.