Can originally claimed subject matter be considered new matter?
Interestingly, originally claimed subject matter is generally not considered new matter, even if it’s not described in the rest of the specification. According to MPEP 2163.06: “The claims as filed in the original specification are part of the disclosure and therefore, if an application as originally filed contains a claim disclosing material not disclosed in…
Read MoreHow does the “original claims” concept affect specification and claim correspondence?
The concept of “original claims” has a unique impact on the correspondence between specification and claims. MPEP 2173.03 states: “Original claims constitute part of the specification and provide their own written description.” This means that original claims (those present in the application as filed) are considered part of the specification itself. As such, they inherently…
Read MoreCan an original claim lack written description support?
Yes, an original claim can lack written description support. According to MPEP 2163.03: “While there is a presumption that an adequate written description of the claimed invention is present in the specification as filed, In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976), a question as to whether a specification provides…
Read MoreHow does functional language in original claims affect written description requirements?
Functional language in original claims can lead to written description issues if not properly supported by the specification. According to MPEP 2163.03: “[A]n adequate written description of a claimed genus requires more than a generic statement of an invention’s boundaries.” This means that when claims use functional language to define the invention, the specification must…
Read MoreDoes filing a Request for Continued Examination (RCE) affect the determination of the elected invention?
No, filing a Request for Continued Examination (RCE) does not change the determination of the elected invention. According to MPEP 818.02(a): “The claims originally presented and acted upon by the Office on their merits determine the invention elected by an applicant in the application, and in any request for continued examination (RCE) filed for the…
Read MoreHow is the elected invention determined in a patent application?
The elected invention in a patent application is determined by the claims that were originally presented and acted upon by the USPTO on their merits. MPEP 818.02(a) states: “The claims originally presented and acted upon by the Office on their merits determine the invention elected by an applicant in the application, and in any request…
Read MoreWhat is the basis for disclosure in a patent application?
The basis for disclosure in a patent application is outlined in MPEP 608. It states: “Applicant may rely for disclosure upon the specification with original claims and drawings, as filed.” This means that the original specification, claims, and drawings submitted at the time of filing form the foundation of the disclosure. Any amendments or new…
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