Can amending a claim lead to a rejection under 35 U.S.C. 112(a)?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-29 10 Rules 5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. Yes, amending a claim to include an invention not described in the original application can lead to a rejection under 35 U.S.C. 112(a). The MPEP 2174 states: “If a claim is amended to include an invention that is not described in the application as filed, a rejection of that claim under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as being directed to subject matter that is not described in the specification as filed may be appropriate.” This is illustrated by the case of In re Simon , where claims to a reaction product of a subcombination were found not to be described in the original application that disclosed a combination. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Claims Must Be Supported by Description MPEP 2174 Permitted Claims Must Describe Entire Invention MPEP 2174 Specification and Claims Must Meet Separate Standards MPEP 2174 Claim Support Requirement MPEP 2174 Recommended Claims Must Include Cooling Zone Location MPEP 2174 Claims Must Be Supported by Specification MPEP 2174 Permitted Claims Must Be Supported by Specification MPEP 2174 Claims Must Specify Cooling Step or Location MPEP 2174 Request for Nonpublication and Certification Under 35 U.S.C. 122(b)(2)(B)(i) MPEP 1135 Permitted Claim for Priority/Benefit Must Be Filed in Reissue Application MPEP 1410 Required Other Related FAQs 5 FAQs Collapse Can a claim be rejected under 35 U.S.C. 112(b) if the description is not commensurate with the claim scope? What happens if a critical feature is not included in the claims? What is the relationship between 35 U.S.C. 112(a) and (b)? How does 35 U.S.C. 112(f) interact with other requirements of 35 U.S.C. 112? How does the patent disclo...