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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II. New Matter
New matter is subject matter which has no antecedent basis in the original specification, drawings or claim.
- An amendment to the claim must have antecedent basis 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 claim which has no antecedent basis 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.
The claim must be rejected under 35 U.S.C. 112(a) (or for applications field prior to September 16, 2012, 35 U.S.C. 112, first paragraph).
- 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 antecedent basis 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.
Examples of permissible amendments filed with the original application include:
- a preliminary amendment filed simultaneously with the application papers, that is specifically identified in the original oath/declaration; and
- the inclusion of a disclaimer in the original specification or on the drawings/photographs as filed.
An example of an impermissible amendment which introduces new matter would be an amendment to the claim without antecedent basis in the original disclosure which would change the configuration or surface appearance of the original design by the addition of previously undisclosed subject matter.
If an amendment that introduces new matter into the claim is the result of a rejection under 35 U.S.C. 112(a) and (b), (or for applications filed prior to September 16, 2012, 35 U.S.C. 112, first and second paragraphs) for lack of enablement and indefiniteness, and it is clear that the disclosure of the claimed design as originally filed cannot be corrected without the introduction of new matter, the record of the application should reflect that the claim is seen to be fatally defective.
III. 35 U.S.C. 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).
