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 does the written description requirement apply to new or amended claims?
For new or amended claims, the applicant must show support in the original disclosure. The MPEP states: “With respect to newly added or amended claims, applicant should show support in the original disclosure for the new or amended claims.” The examiner has the initial burden of presenting evidence or reasoning why a person skilled in…
Read MoreWhat 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 MoreHow does the written description requirement apply to genus-species claims in patent applications?
How does the written description requirement apply to genus-species claims in patent applications? The written description requirement for genus-species claims in patent applications is particularly important and often scrutinized. According to MPEP 2163: “For generic claims, the genus can be adequately described if the disclosure presents a sufficient number of representative species that encompass the…
Read MoreHow does the written description requirement apply to genus claims?
The written description requirement for genus claims is particularly important and often challenging. MPEP 2304.02(d) states: “For generic claims, the genus can be adequately described if the disclosure presents a sufficient number of representative species that encompass the genus. If the genus has substantial variance, the disclosure must describe a sufficient variety of species to…
Read MoreWhat is a “written assurance” in the context of patent deposits?
A “written assurance” in the context of patent deposits is a statement provided by the applicant indicating that an acceptable deposit will be made. The MPEP 2411.03 mentions: “[I]n the event that an application for patent is otherwise in condition for allowance except for a required deposit and the Office has received a written assurance…
Read MoreHow should prophetic examples be written in patent applications?
Prophetic examples in patent applications should be written in the present tense to distinguish them from working examples. The MPEP 2164.02 states: “Paper examples should be described in the past tense. Prophetic examples (paper examples describing prophetic embodiments or simulations) should be written in the present tense.” This distinction in tense helps readers and examiners…
Read MoreWhat are working and prophetic examples in patent applications?
Working and prophetic examples are two types of examples that can be included in patent applications: Working examples are based on work actually performed. Prophetic examples describe embodiments of the invention based on predicted results rather than work actually conducted or results achieved. As stated in MPEP 2164.02: “An example may be ‘working’ or ‘prophetic.’…
Read MoreHow do working and prophetic examples relate to the enablement requirement?
Both working and prophetic examples play a crucial role in satisfying the enablement requirement for patent applications. The MPEP 2164.02 explains: “The specification need not contain an example if the invention is otherwise disclosed in such manner that one skilled in the art will be able to practice it without an undue amount of experimentation.”…
Read MoreWhat is the difference between working examples and prophetic examples in patent applications?
Working examples and prophetic examples serve different purposes in patent applications: Working examples are based on actual experiments or results that have been carried out. Prophetic examples describe anticipated results of experiments or procedures that haven’t been performed yet. According to MPEP 2164.02: “An example may be “working” or “prophetic.” A working example is based…
Read More