1504.04 Considerations Under 35 U.S.C. 112
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Section Frequency Chart
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(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
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I. 35 U.S.C. 112(a) and (b)
A. Enablement and Scope of Protection
Any analysis for compliance with 35 U.S.C. 112 should begin with a determination of the scope of protection sought by the claims.
The title of the design identifies the article in which the design is embodied by the name generally known and used by the public and may contribute to defining the scope of the claim.
B. New Matter
New matter is subject matter which has no support in the original specification, drawings or claim.
- An amendment to the claim must have support in the original disclosure.
- Prior to final action, all amendments will be entered in the application and will be considered by the examiner.
An amendment to the disclosure not affecting the claim (such as environment in the title or in broken lines in the drawings), which has no support in the application as originally filed, must be objected to under 35 U.S.C. 132 as lacking support in the application as originally filed and a requirement must be made to cancel the new matter.
A design claim may be amended by broadening or narrowing its scope within the bounds of the disclosure as originally filed provided it complies with the written description requirement.
- An amendment to the claim, however, which has no support in the specification and/or drawings as originally filed introduces new matter because that subject matter is not described in the application as originally filed.
An example of an amendment which introduces new matter would be an amendment changing the configuration of the original design by the addition of previously undisclosed subject matter.
Another example of an amendment which introduces new matter would be an amendment changing the surface appearance of the original design by the addition of previously undisclosed subject matter.
- Removal of three-dimensional surface treatment that is an integral part of the configuration of the original design, for example, beading, grooves, and ribs, is an additional example of an amendment that would introduce new matter.
Also, an amendment that changes the scope of a design by either converting originally-disclosed solid line structure to broken lines or converting originally-disclosed broken line structure to solid lines would not introduce new matter because such amendment would not introduce subject matter that was not originally disclosed.
Additional examples of amendments that would not introduce new matter include:
- (A) a preliminary amendment filed simultaneously with the application papers; and
- (B) the inclusion of a disclaimer in the original specification or on the drawings/photographs as filed
C. Written Description
1. General Principles Governing Compliance with the Written Description Requirement for Design Applications
The scope of a design claim is defined by what is shown in full lines in the application drawings.
In evaluating written description, “the test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.”
2. Applying the General Principles to Specific Situations in Design Applications Where Issues of Compliance with the Written Description Requirement May Arise
A written description requirement issue generally involves the question of whether the subject matter of a claim is supported by the disclosure of an application as filed.
- A question as to whether the original or earlier disclosure of a design provides an adequate written description for a claimed design may arise when an amended claim is presented, or where a claim to entitlement of an earlier priority date or effective filing date has been made.
3. Ensure That the Record is Clear
The Office has the initial burden of establishing a prima facie case for any rejection.
- If the examiner determines that a rejection for lack of written description is appropriate, the examiner must set forth express findings of fact which support that rejection.
II. 35 U.S.C. 112(b) or pre-AIA 112, second paragraph
Defects in claim language give rise to a rejection of the claim under the second paragraph of 35 U.S.C. 112(b) (or for applications filed prior to September 16, 2012, the second paragraph of 35 U.S.C. 112).
A claim may appear indefinite when read in a vacuum, but may be definite upon reviewing the application disclosure or prior art teachings.
- Moreover, an otherwise definite claim in a vacuum may be uncertain when reviewing the application disclosure and prior art.
Use of phrases in the claim such as “or similar article,” “or the like,” or equivalent terminology has been held to be indefinite.
- However, the use of broadening language such as “or the like,” or “or similar article” in the title when directed to the environment of the article embodying the design should not be the basis for a rejection under 35 U.S.C. 112(b) (or for applications filed prior to September 16, 2012, 35 U.S.C. 112, second paragraph).
