How does an examiner reject claims for missing essential subject matter under 35 U.S.C. 112(a)?
When an examiner believes that a claim is missing subject matter essential to the practice of the invention, they can reject it under 35 U.S.C. 112(a) for lack of enablement. MPEP 2166 provides a form paragraph for this type of rejection:
“Claim [1] rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as based on a disclosure which is not enabling. The disclosure does not enable one of ordinary skill in the art to practice the invention without [2], which is/are critical or essential to the practice of the invention but not included in the claim(s). See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976).”
In this rejection:
- The examiner must identify the subject matter omitted from the claims.
- The examiner must provide a rationale for considering the omitted subject matter critical or essential.
- The examiner must cite evidence demonstrating that the applicant considered the feature essential.
This type of rejection ensures that the claims fully capture the essential elements of the invention as described in the specification, maintaining the enablement requirement of 35 U.S.C. 112(a).
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