Can a claim be rejected under 35 U.S.C. 112(b) if the description is not commensurate with the claim scope?

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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. No, a claim cannot be rejected under 35 U.S.C. 112(b) solely because the description is not commensurate with the claim scope. The MPEP 2174 states: “If a description or the enabling disclosure of a specification is not commensurate in scope with the subject matter encompassed by a claim, that fact alone does not render the claim imprecise or indefinite or otherwise not in compliance with 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph; rather, the claim is based on an insufficient disclosure (35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph) and should be rejected on that ground.” This means that such issues are related to the written description or enablement requirements under 35 U.S.C. 112(a), not the definiteness requirement under 112(b). Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Claim Support Requirement MPEP 2174 Recommended Specification and Claims Must Meet Separate Standards MPEP 2174 Claims Must Be Supported by Description MPEP 2174 Permitted Claims Must Include Cooling Zone Location MPEP 2174 Claims Must Describe Entire Invention 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 amending a claim lead to a rejection under 35 U.S.C. 112(a)? 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. 1...