What happens if a critical feature is not included in the claims?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-30 10 Rules 5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. If a critical feature disclosed in the specification is not included in the claims, it may lead to a rejection under 35 U.S.C. 112(a). The MPEP 2174 explains: “If the specification discloses that a particular feature or element is critical or essential to the practice of the invention, failure to recite or include that particular feature or element in the claims may provide a basis for a rejection based on the ground that those claims are not supported by an enabling disclosure.” This is illustrated by the case of In re Mayhew , where claims were rejected because they failed to specify a critical cooling step and its location in the process. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Claims Must Be Supported by Specification MPEP 2174 Permitted Claims Must Specify Cooling Step or Location MPEP 2174 Claims Must Be Supported by Specification MPEP 2174 Claims Must Be Supported by Description MPEP 2174 Permitted Claims Must Include Cooling Zone Location MPEP 2174 Specification and Claims Must Meet Separate Standards MPEP 2174 Claim Support Requirement MPEP 2174 Recommended Claims Must Describe Entire Invention MPEP 2174 Request for Nonpublication and Certification Under 35 U.S.C. 122(b)(2)(B)(i) MPEP 1135 Permitted Claim for Priority/Benefit Must Be Filed in Reissue Application MPEP 1410 Required Other Related FAQs 5 FAQs Collapse Can amending a claim lead to a rejection under 35 U.S.C. 112(a)? Can a claim be rejected under 35 U.S.C. 112(b) if the description is not commensurate with the claim scope? What is the relationship between 35 U.S.C. 112(a) and (b)? How does 35 U.S.C. 112(f) interact with other requirements of 35 U.S.C. 112? How does the patent disclos...