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[04274108]

Hello. This is a question relating to drafting an amendment to a specification. Specifically, the instance where an claim uses words that were not originally used in the specification.  The words do not recite elements but the implementation of the invention.

For example, assume that the original claims state:


The invention providing means for mixing gasoline.
The invention providing means for mixing beverages.


Furthermore, assume that the original specification recites that the invention is used "for mixing gasoline" but excludes the fact that it can be used "for mixing beverages".

My question is whether or not "mixing beverages" can be amended to the original specification or if this would constitutes "new matter"?

Thanks to all who offer anything for me to contemplate!

Marcel

[Isaac]

I would guess that your example amendment would constitute new
matter.  But it is possible to use words that were not in the
specification before in a claim without introducing new
matter.  I just don't think that a description that includes
gasoline would be helpful to get a beverage limitation added.

[04274108]

Thanks Isaac!

[wc]

Original claims are considered to be part of the specification -  see MPEP 2163 (I).  I do not believe that you'll have a problem if you import the laguage of the claim into the specification.  If you change the language or add anything else, you may create a new matter issue.
You should also be aware that any prior art that anticipates the first claim also anticipates the second claim.

By the way, your example claims are "means plus function" claims and they do recite, implicitly, all of the structural elements (or their equivalents) necessary for mixing as described in the specification.

[Isaac]

Good catch WC.  I missed the point that the original claims already had the limitation in question.   What should have happened in the first office action is that the PTO should have objected to the 2nd claim and required that the description be added to the spec that the claim be cancelled.