What happens if a critical feature is not included in the claims?
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.
To learn more:
Topics:
First And Second Paragraphs,
MPEP 2100 - Patentability,
MPEP 2174 - Relationship Between The Requirements Of 35 U.S.C. 112(A) And (B) Or Pre - Aia 35 U.S.C. 112,
Patent Law,
Patent Procedure