What are the requirements for a written description rejection by a patent examiner?
When rejecting a claim for lack of written description, a patent examiner must fulfill specific requirements. According to MPEP 2163.04, the examiner must: Identify the claim limitation(s) at issue Establish a prima facie case by providing reasons why a person skilled in the art would not have recognized that the inventor was in possession of…
Read MoreHow should a patent examiner respond to an applicant’s reply to a written description rejection?
When an applicant replies to a written description rejection, the patent examiner must follow a specific process as outlined in MPEP 2163.04: Review the entire record, including amendments, arguments, and any evidence submitted by the applicant. If the whole record now demonstrates that the written description requirement is satisfied, do not repeat the rejection in…
Read MoreCan new matter be added to a patent application to overcome a written description rejection?
Can new matter be added to a patent application to overcome a written description rejection? No, new matter cannot be added to a patent application to overcome a written description rejection. This is a fundamental principle in patent law, as outlined in MPEP 2163: “No amendment may introduce new matter into the disclosure of an…
Read More