What 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 U.S.C. 119, 120, 365, or 386, each claim limitation must be expressly, implicitly, or inherently supported in the originally filed disclosure.”
Key issues that can arise include:
- Adding new limitations not described in the original specification
- Broadening claim scope beyond what was originally disclosed
- Introducing new combinations of elements not originally presented
To avoid these issues, applicants should ensure that any new or amended claims are fully supported by the original disclosure, either explicitly or implicitly. If support is not clear, applicants may need to provide explanations or point to specific parts of the original disclosure that provide the necessary support.
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