You are here:  Ed9 08.2017 Guidebook  » Appendix V: 35 U.S.C. 112

MPEP SECTION SUMMARY This section covers the support for the claimed subject matter in the disclosure. For instance, a written description requirement issue generally involves the question of whether the subject matter of a claim is supported by [conforms to] the disclosure of an application as filed.

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2163.01

If the examiner concludes that the claimed subject matter is not supported [described] in an application as filed, this would result in a rejection of the claim on the ground of a lack of written description under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, or denial of the benefit of the filing date of a previously filed application.

• The claim should not be rejected or objected to on the ground of new matter.

 

MPEP SECTION SUMMARY This section covers the standard for determining compliance with the written description requirement. An objective standard for determining compliance with the written description requirement is, “does the description clearly allow persons of ordinary skill in the art to recognize that he or she invented what is claimed.” Whenever the issue arises, the fundamental factual inquiry is whether the specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, the applicant was in possession of the invention as now claimed. A few further details regarding this standard are covered in this section.

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2163.02

The subject matter of the claim need not be described literally (i.e., using the same terms or in haec verba) in order for the disclosure to satisfy the description requirement.

• If a claim is amended to include subject matter, limitations, or terminology not present in the application as filed, involving a departure from, addition to, or deletion from the disclosure of the application as filed, the examiner should conclude that the claimed subject matter is not described in that application.

MPEP SECTION SUMMARY A description requirement issue can arise in a number of different circumstances where it must be determined whether the subject matter of a claim is supported in an application as filed. This section covers typical circumstances where adequate written description issues arise. Typical circumstances include amendments affecting a claim, reliance on the filing date of a parent application under 35 U.S.C. 120, reliance on priority under 35 U.S.C. 119, and support for a claim corresponding to a count in an interference. In addition, circumstances may include indefiniteness rejection of a means- (or step-) plus-function limitation.

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2163.03

I. AMENDMENT AFFECTING A CLAIM

An amendment to the claims or the addition of a new claim must be supported by the description of the invention in the application as filed.

II. RELIANCE ON FILING DATE OF PARENT APPLICATION UNDER 35 U.S.C. 120

Under 35 U.S.C. 120, the claims in a U.S. application are entitled to the benefit of the filing date of an earlier filed U.S. application if the subject matter of the claim is disclosed in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph in the earlier filed application.

III. RELIANCE ON PRIORITY UNDER 35 U.S.C. 119

Under 35 U.S.C. 119(a) or (e), the claims in a U.S. application are entitled to the benefit of a foreign priority date or the filing date of a provisional application if the corresponding foreign application or provisional application supports the claims in the manner required by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.

IV. SUPPORT FOR A CLAIM CORRESPONDING TO A COUNT IN AN INTERFERENCE

In an interference proceeding, the claim corresponding to a count must be supported by the specification in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.

V. ORIGINAL CLAIM NOT SUFFICIENTLY DESCRIBED

An original claim may lack written description support when:

1. The claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved or
2. A broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated.

VI. INDEFINITENESS REJECTION OF A MEANS- (OR STEP-) PLUS-FUNCTION LIMITATION

A claim limitation expressed in means- (or step-) plus-function language “shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”

 

MPEP SECTION SUMMARY The inquiry into whether the description requirement is met must be determined on a case-by-case basis and is a question of fact. This section covers the burden on the examiner with regard to the written description requirement.

I. STATEMENT OF REJECTION REQUIREMENTS

In rejecting a claim, the examiner must set forth express findings of fact which support the lack of written description conclusion (see MPEP § 2163 for examination guidelines pertaining to the written description requirement).

These findings should:

• (A) Identify the claim limitation(s) at issue; and
• (B) Establish a prima facie case by providing reasons why a person skilled in the art at the time the application was filed would not have recognized that the inventor was in possession of the invention as claimed in view of the disclosure of the application as filed.
  • A general allegation of “unpredictability in the art” is not a sufficient reason to support a rejection for lack of adequate written description.
  • A simple statement such as “Applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation ‘____’ in the application as filed.” may be sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported.
    
    

II. RESPONSE TO APPLICANT’S REPLY

Upon reply by applicant, before repeating any rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, para. 1, for lack of written description, review the basis for the rejection in view of the record as a whole, including amendments, arguments, and any evidence submitted by applicant.

 

MPEP SECTION SUMMARY The failure to meet the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, commonly arises when the claims are changed after filing to either broaden or narrow the breadth of the claim limitations, or to alter a numerical range limitation or to use claim language which is not synonymous with the terminology used in the original disclosure. This section discusses further details on the changes to the scope of the claims.

I. BROADENING CLAIM

A.Omission of a Limitation

Under certain circumstances, omission of a limitation can raise an issue regarding whether the inventor had possession of a broader, more generic invention.

A claim that omits an element which applicant describes as an essential or critical feature of the invention originally disclosed does not comply with the written description requirement.

B. Addition of Generic Claim

The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species.

• A “representative number of species” means that the species which are adequately described are representative of the entire genus.
• Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus.
  
  

II. NARROWING OR SUBGENERIC CLAIM

The introduction of claim changes which involve narrowing the claims by introducing elements or limitations which are not supported by the as-filed disclosure is a violation of the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.

The Board affirmed the rejection under 35 U.S.C. 112, first paragraph, of claims to an internal combustion engine which recited “at least one of said piston and said cylinder (head) having a recessed channel.”

• The Board held that the application which disclosed a cylinder head with a recessed channel and a piston without a recessed channel did not specifically disclose the “species” of a channeled piston.

While these and other cases find that recitation of an undisclosed species may violate the description requirement, a change involving subgeneric terminology may or may not be acceptable.

• Applicant was not entitled to the benefit of a parent filing date when the claim was directed to a subgenus (a specified range of molecular weight ratios) where the parent application contained a generic disclosure and a specific example that fell within the recited range because the court held that subgenus range was not described in the parent application.

III. RANGE LIMITATIONS

With respect to changing numerical range limitations, the analysis must take into account which ranges one skilled in the art would consider inherently supported by the discussion in the original disclosure.

In the decision in In reWertheim, the ranges described in the original specification included a range of “25%- 60%” and specific examples of “36%” and “50%.”

• A corresponding new claim limitation to “at least 35%” did not meet the description requirement because the phrase “at least” had no upper limit and caused the claim to read literally on embodiments outside the “25% to 60%” range, however a limitation to “between 35% and 60%” did meet the description requirement.

 

MPEP SECTION SUMMARY Lack of written description is an issue that generally arises with respect to the subject matter of a claim. If an applicant amends or attempts to amend the abstract, specification or drawings of an application, an issue of new matter will arise if the content of the amendment is not described in the application as filed. Stated another way, information contained in any one of the specification, claims or drawings of the application as filed may be added to any other part of the application without introducing new matter. This section covers the treatment of new matter, the review of new matter objections and/or rejections, and claimed subject matter not disclosed in the remainder of the specification.

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2163.06

There are two statutory provisions that prohibit the introduction of new matter.

• The first provision is 35 U.S.C. 132, which provides that no amendment shall introduce new matter into the disclosure of the invention.
• The second provision is 35 U.S.C. 251, which provides that no new matter shall be introduced into the application for reissue.
  
  

I. TREATMENT OF NEW MATTER

If new subject matter is added to the disclosure, whether it be in the abstract, the specification, or the drawings, the examiner should object to the introduction of new matter under 35 U.S.C. 132 or 251 as appropriate, and require applicant to cancel the new matter.

• If new matter is added to the claims, the examiner should reject the claims under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph - written description requirement.

II. REVIEW OF NEW MATTER OBJECTIONS AND/OR REJECTIONS

A rejection of claims is reviewable by the Patent Trial and Appeal Board, whereas an objection and requirement to delete new matter is subject to supervisory review by petition under 37 CFR 1.181.

• If both the claims and specification contain new matter either directly or indirectly, and there has been both a rejection and objection by the examiner, the issue becomes appealable and should not be decided by petition.
  
  

III. CLAIMED SUBJECT MATTER NOT DISCLOSED IN REMAINDER OF SPECIFICATION

The claims as filed in the original specification are part of the disclosure and therefore, if an application as originally filed contains a claim disclosing material not disclosed in the remainder of the specification, the applicant may amend the specification to include the claimed subject matter.

 

MPEP SECTION SUMMARY Amendments to an application which are supported in the original description are NOT new matter. This section provides further details on amendments which are supported in the original description.

I. REPHRASING

Mere rephrasing of a passage does not constitute new matter. Accordingly, a rewording of a passage where the same meaning remains intact is permissible.

II. OBVIOUS ERRORS

An amendment to correct an obvious error does not constitute new matter where one skilled in the art would not only recognize the existence of error in the specification, but also the appropriate correction.

Where a U.S. application as originally filed was in a non-English language and an English translation thereof was subsequently submitted pursuant to 37 CFR 1.52(d), if there is an error in the English translation, applicant may rely on the disclosure of the originally filed non-English language U.S. application to support correction of an error in the English translation document.

 

MPEP SECTION SUMMARY By disclosing in a patent application a device that inherently performs a function or has a property, operates according to a theory or has an advantage, a patent application necessarily discloses that function, theory or advantage, even though it says nothing explicit concerning it. The application may later be amended to recite the function, theory or advantage without introducing prohibited new matter.

 

MPEP SECTION SUMMARY Instead of repeating some information contained in another document, an application may attempt to incorporate the content of another document or part thereof by reference to the document in the text of the specification. The information incorporated is as much a part of the application as filed as if the text was repeated in the application, and should be treated as part of the text of the application as filed. Replacing the identified material incorporated by reference with the actual text is not new matter.

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