How 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 MoreWhen 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…
Read MoreHow does new matter differ from lack of written description?
While both new matter and lack of written description relate to the content of a patent application, they are distinct concepts with different implications. The MPEP 2163.01 clarifies: “The claim should not be rejected or objected to on the ground of new matter. As framed by the court in In re Rasmussen, 650 F.2d 1212,…
Read MoreWhat are the implications of narrowing claims for the written description requirement?
Narrowing claims by introducing elements or limitations not supported by the as-filed disclosure can violate the written description requirement. The MPEP 2163.05 states: “The introduction of claim changes which involve narrowing the claims by introducing elements or limitations which are not supported by the as-filed disclosure is a violation of the written description requirement of…
Read MoreHow does the MPEP address the omission of a limitation in a patent claim?
How does the MPEP address the omission of a limitation in a patent claim? The MPEP addresses the omission of a limitation in a patent claim in section 2163.05. According to this section, “[a]n amendment to a claim that omits an element that applicant describes as an essential or critical feature of the invention originally…
Read MoreHow does the MPEP define “benefit” in the context of priority claims?
According to MPEP 2304.02(c), “benefit” in the context of priority claims refers to the benefit of an earlier filing date. The MPEP states: “The party seeking benefit may be required to provide a chart showing the written description for each claim in dispute, and/or an explanation of additional evidence showing possession of the claimed invention.”…
Read MoreHow does the MPEP address changes in numerical range limitations?
How does the MPEP address changes in numerical range limitations? The MPEP addresses changes in numerical range limitations in section 2163.05. It states that “[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 written description requirement.” This principle applies…
Read MoreWhat are the typical circumstances where an adequate written description issue arises?
According to MPEP 2163.03, there are six typical circumstances where an adequate written description issue can arise: Amendment affecting a claim Reliance on filing date of parent application under 35 U.S.C. 120 Reliance on priority under 35 U.S.C. 119 Support for a claim corresponding to a count in an interference Original claim not sufficiently described…
Read MoreHow does the written description requirement relate to means-plus-function claim limitations?
Means-plus-function claim limitations have a special relationship with the written description requirement. According to MPEP 2163.03: “A claim limitation expressed in means- (or step-) plus-function language ‘shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.’ 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.” However,…
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