Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 2100 – Patentability (2)
New or amended claims can face written description issues if they introduce elements not supported by the original disclosure. The MPEP 2163.03 states:
“To comply with the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, or to be entitled to an earlier priority date or filing date under 35 U.S.C. 119, 120, 365, or 386, each claim limitation must be expressly, implicitly, or inherently supported in the originally filed disclosure.”
Key issues that can arise include:
- Adding new limitations not described in the original specification
- Broadening claim scope beyond what was originally disclosed
- Introducing new combinations of elements not originally presented
To avoid these issues, applicants should ensure that any new or amended claims are fully supported by the original disclosure, either explicitly or implicitly. If support is not clear, applicants may need to provide explanations or point to specific parts of the original disclosure that provide the necessary support.
To learn more:
For a specification to properly support a means-plus-function limitation, it must disclose the corresponding structure, material, or acts that perform the claimed function. The MPEP states:
“The proper test for meeting the definiteness requirement is that the corresponding structure (or material or acts) of a means- (or step-) plus-function limitation must be disclosed in the specification itself in a way that one skilled in the art will understand what structure (or material or acts) will perform the recited function.“
If the specification does not disclose adequate structure, the claim may be rejected under 35 U.S.C. 112(b) for indefiniteness and may also lack written description under 35 U.S.C. 112(a).
To learn more:
MPEP 2163.03 – Typical Circumstances Where Adequate Written Description Issue Arises (1)
New or amended claims can face written description issues if they introduce elements not supported by the original disclosure. The MPEP 2163.03 states:
“To comply with the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, or to be entitled to an earlier priority date or filing date under 35 U.S.C. 119, 120, 365, or 386, each claim limitation must be expressly, implicitly, or inherently supported in the originally filed disclosure.”
Key issues that can arise include:
- Adding new limitations not described in the original specification
- Broadening claim scope beyond what was originally disclosed
- Introducing new combinations of elements not originally presented
To avoid these issues, applicants should ensure that any new or amended claims are fully supported by the original disclosure, either explicitly or implicitly. If support is not clear, applicants may need to provide explanations or point to specific parts of the original disclosure that provide the necessary support.
To learn more:
MPEP 2181 – Identifying And Interpreting A 35 U.S.C. 112(F) Or Pre – Aia 35 U.S.C. 112 (1)
For a specification to properly support a means-plus-function limitation, it must disclose the corresponding structure, material, or acts that perform the claimed function. The MPEP states:
“The proper test for meeting the definiteness requirement is that the corresponding structure (or material or acts) of a means- (or step-) plus-function limitation must be disclosed in the specification itself in a way that one skilled in the art will understand what structure (or material or acts) will perform the recited function.“
If the specification does not disclose adequate structure, the claim may be rejected under 35 U.S.C. 112(b) for indefiniteness and may also lack written description under 35 U.S.C. 112(a).
To learn more:
Patent Law (2)
New or amended claims can face written description issues if they introduce elements not supported by the original disclosure. The MPEP 2163.03 states:
“To comply with the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, or to be entitled to an earlier priority date or filing date under 35 U.S.C. 119, 120, 365, or 386, each claim limitation must be expressly, implicitly, or inherently supported in the originally filed disclosure.”
Key issues that can arise include:
- Adding new limitations not described in the original specification
- Broadening claim scope beyond what was originally disclosed
- Introducing new combinations of elements not originally presented
To avoid these issues, applicants should ensure that any new or amended claims are fully supported by the original disclosure, either explicitly or implicitly. If support is not clear, applicants may need to provide explanations or point to specific parts of the original disclosure that provide the necessary support.
To learn more:
For a specification to properly support a means-plus-function limitation, it must disclose the corresponding structure, material, or acts that perform the claimed function. The MPEP states:
“The proper test for meeting the definiteness requirement is that the corresponding structure (or material or acts) of a means- (or step-) plus-function limitation must be disclosed in the specification itself in a way that one skilled in the art will understand what structure (or material or acts) will perform the recited function.“
If the specification does not disclose adequate structure, the claim may be rejected under 35 U.S.C. 112(b) for indefiniteness and may also lack written description under 35 U.S.C. 112(a).
To learn more:
Patent Procedure (2)
New or amended claims can face written description issues if they introduce elements not supported by the original disclosure. The MPEP 2163.03 states:
“To comply with the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, or to be entitled to an earlier priority date or filing date under 35 U.S.C. 119, 120, 365, or 386, each claim limitation must be expressly, implicitly, or inherently supported in the originally filed disclosure.”
Key issues that can arise include:
- Adding new limitations not described in the original specification
- Broadening claim scope beyond what was originally disclosed
- Introducing new combinations of elements not originally presented
To avoid these issues, applicants should ensure that any new or amended claims are fully supported by the original disclosure, either explicitly or implicitly. If support is not clear, applicants may need to provide explanations or point to specific parts of the original disclosure that provide the necessary support.
To learn more:
For a specification to properly support a means-plus-function limitation, it must disclose the corresponding structure, material, or acts that perform the claimed function. The MPEP states:
“The proper test for meeting the definiteness requirement is that the corresponding structure (or material or acts) of a means- (or step-) plus-function limitation must be disclosed in the specification itself in a way that one skilled in the art will understand what structure (or material or acts) will perform the recited function.“
If the specification does not disclose adequate structure, the claim may be rejected under 35 U.S.C. 112(b) for indefiniteness and may also lack written description under 35 U.S.C. 112(a).
To learn more:
Sixth Paragraph Limitation (1)
For a specification to properly support a means-plus-function limitation, it must disclose the corresponding structure, material, or acts that perform the claimed function. The MPEP states:
“The proper test for meeting the definiteness requirement is that the corresponding structure (or material or acts) of a means- (or step-) plus-function limitation must be disclosed in the specification itself in a way that one skilled in the art will understand what structure (or material or acts) will perform the recited function.“
If the specification does not disclose adequate structure, the claim may be rejected under 35 U.S.C. 112(b) for indefiniteness and may also lack written description under 35 U.S.C. 112(a).
To learn more: