How does the written description requirement apply to new or amended claims?
For new or amended claims, the applicant must show support in the original disclosure. The MPEP states:
“With respect to newly added or amended claims, applicant should show support in the original disclosure for the new or amended claims.”
The examiner has the initial burden of presenting evidence or reasoning why a person skilled in the art would not recognize the written description of the invention in the application. If the examiner concludes that the written description requirement is not met, they must:
- Identify the claim limitations not adequately supported
- Explain why the claim is not fully supported by the disclosure
- Provide suggestions for overcoming the rejection when possible
Applicants should specifically point out where support can be found in the original disclosure for new or amended claims.
To learn more:
Topics:
"Written Description" Requirement,
First Paragraph,
MPEP 2100 - Patentability,
MPEP 2163 - Guidelines For The Examination Of Patent Applications Under The 35 U.S.C. 112(A) Or Pre - Aia 35 U.S.C. 112,
Patent Law,
Patent Procedure