Can a patent examiner suggest amendments to claims to address written description issues?

Yes, patent examiners can and often do suggest amendments to claims to address written description issues. This practice is encouraged as part of the examination process to help applicants overcome rejections and move their applications forward. The MPEP 2163.04 states: “When appropriate, suggest amendments to the claims which can be supported by the application’s written…

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How should patent examiners address antecedent basis issues?

Patent examiners should address antecedent basis issues in a constructive manner. The MPEP 2173.05(e) provides guidance: “The examiner’s task of making sure the claim language complies with the requirements of the statute should be carried out in a positive and constructive way, so that minor problems can be identified and easily corrected, and so that…

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How can an applicant overcome an indefiniteness rejection based on relative terminology?

An applicant can overcome an indefiniteness rejection based on relative terminology in several ways. According to MPEP 2173.05(b), “During prosecution, an applicant may overcome an indefiniteness rejection by providing evidence that the meaning of the term of degree can be ascertained by one of ordinary skill in the art when reading the disclosure.” This can…

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When does omitting a limitation violate the written description requirement?

Omitting a limitation can violate the written description requirement when the omitted element is described as essential or critical to the invention in the original disclosure. The MPEP 2163.05 states: “A claim that omits an element which applicant describes as an essential or critical feature of the invention originally disclosed does not comply with the…

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