What is the significance of the Transco Products decision in determining benefit claims?
The Transco Products decision is significant in determining benefit claims because it established that a later-filed application does not need to use the exact same words as the prior-filed application to satisfy the written description requirement. According to MPEP 211.05:
‘New or amended claims which introduce elements or limitations that are not supported by the as-filed disclosure violate the written description requirement. See, e.g., In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971) (subgenus range was not supported by generic disclosure and specific example within the subgenus range); In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972) (an adequate description of a genus may not support claims to a subgenus or species within the genus). While there is no in haec verba requirement, newly added claims or claim limitations must be supported in the specification through express, implicit, or inherent disclosure. An amendment to correct an obvious error does not constitute new matter where one skilled in the art would not only recognize the existence of the error in the specification, but also recognize the appropriate correction. In re Oda, 443 F.2d 1200, 170 USPQ 268 (CCPA 1971).’
This means that the USPTO will consider whether the prior-filed application provides sufficient support for the claims in the later-filed application, even if the exact wording is different, as long as the support is express, implicit, or inherent in the original disclosure.
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