Can a new limitation in a patent claim create an enablement problem?
Adding a new limitation to a patent claim does not necessarily create an enablement problem. The MPEP provides guidance on this issue: “Even if a new limitation is not described in the original disclosure, the addition of a new limitation in and of itself may not create an enablement problem provided that one skilled in…
Read MoreWhat actions can an examiner take if the specification doesn’t provide support for claim terms?
If the specification doesn’t provide adequate support or antecedent basis for claim terms, an examiner can take several actions. According to MPEP 2173.03: “If the specification does not provide the needed support or antecedent basis for the claim terms, the specification should be objected to under 37 CFR 1.75(d)(1).” The examiner’s actions may include: Objecting…
Read MoreWhat is the examiner’s role in ensuring proper claim terminology?
The examiner plays a crucial role in ensuring proper claim terminology by scrutinizing claims for new matter and new terminology. MPEP 608.01(o) states: Note that examiners should ensure that the terms and phrases used in claims presented late in prosecution of the application (including claims amended via an examiner’s amendment) find clear support or antecedent…
Read More