What issues can arise with new or amended claims regarding written description?
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…
Read MoreWhat is required for a specification to support a means-plus-function limitation?
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…
Read MoreWhat is the secondary purpose of the definiteness requirement in patent claims?
The secondary purpose of the definiteness requirement in patent claims is related to assessing the inventor’s conception of the invention and meeting patentability criteria. The MPEP states: “A secondary purpose is to provide a clear measure of what the inventor or a joint inventor regards as the invention so that it can be determined whether…
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 MoreWhat is the purpose of the general review of disclosure in patent examination?
The general review of disclosure is a crucial step in the patent examination process. According to MPEP 1302.01, its purpose is to ensure that: The entire application meets all formal and substantive (statutory) requirements The language of the claims is enabled by and adequately supported in the original application disclosure There is clear support or…
Read MoreDo claim terms need to be identical to those in the specification?
No, claim terms do not need to be identical to those in the specification. MPEP 1302.01 clarifies this point: It should be noted, however, that exact terms need not be used in haec verba to satisfy the written description requirement of 35 U.S.C. 112(a). The MPEP cites case law to support this, including Eiselstein v.…
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