Can extrinsic evidence expand the meaning of terms in a 35 U.S.C. 102 rejection?
No, extrinsic evidence cannot expand the meaning of terms in a 35 U.S.C. 102 rejection. According to MPEP 2131.01:
“Extrinsic evidence may be used to explain but not expand the meaning of terms and phrases used in the reference relied upon as anticipatory of the claimed subject matter.”
This principle is illustrated in the case of In re Baxter Travenol Labs, where extrinsic evidence was used to explain that the term “commercial blood bags” in a primary reference inherently meant bags containing DEHP, an additive that improved red blood cell storage capability. The extrinsic evidence explained the meaning of the term without expanding it beyond its original scope in the reference.
This approach ensures that the anticipation rejection remains based on what is actually disclosed or inherently present in the prior art reference, rather than improperly broadening the scope of the reference based on external information.
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