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   Effect of a of species election on Claim Scope?
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   Author  Topic: Effect of a of species election on Claim Scope?  (Read 1028 times)
dab2d
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Posts: 73
Effect of a of species election on Claim Scope?
« on: Nov 20th, 2007, 1:30pm »
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Does anyone know of a good case where the point at issue was whether an election of a species limited the scope of the claims.  
 
In the case I am working on, the Applicant, in response to a species requirement, filed a new very broad claim. The applicant states that the new claim reads on 3 of the six species designated by the examiner. Is the stucture of the claim anyway limited to the structure of the species the Applicant indicated under PE?  
 
« Last Edit: Nov 20th, 2007, 1:30pm by dab2d » IP Logged
Wiscagent
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Re: Effect of a of species election on Claim Scope
« Reply #1 on: Nov 20th, 2007, 5:01pm »
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My first concern is - did the "new very broad claim" constitute new matter?
 
If the application as originally filed disclosed A, B and C; and the new claim is for A-F (but D, E and F were not originally disclosed) then the claim represents new matter.
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Richard Tanzer
Patent Agent
dab2d
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Posts: 73
Re: Effect of a of species election on Claim Scope
« Reply #2 on: Nov 20th, 2007, 5:10pm »
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on Nov 20th, 2007, 5:01pm, Wiscagent wrote:
My first concern is - did the "new very broad claim" constitute new matter?
 
If the application as originally filed disclosed A, B and C; and the new claim is for A-F (but D, E and F were not originally disclosed) then the claim represents new matter.

 
 
It is more like the opposite. The disclosure is A, B & C, but the new claim is A & B. The new claim is broader/more generic, but the Applicant states that the new claim is generic only to 3 of the 6 species indicated by the Examiner. How much is the Applicant limited to the stucture as defined in the species that he indicated as reading on the borad claim?
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