Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[yujin]

Hi there,

If an element was claimed in a claim but not mentioned in the specification, is it better just to leave it alone or add the element to the specification by an amendment in a response to an office action?

Thank you very much,

Jin

[OMG IP]

My initial thought is that the claims are part of the specification -- no amendment necessary.

Of course, if the office action requests an amendment of some kind, you can amend the spec all you want (speaking figurtively) as long as you don't add any new matter.

[PatObv]

It shouldn't matter either way.  I'm in agreement ^.  Leave it alone unless asked.

 Something I've encountered more recently is an attorney amending the specification to discuss what was disclosed in the drawings (but not previously elaborated on in the written description) to further support a claim amendment.  In this instance, while not technically necessary, I could better understand the reason for doing so.  Examiner's have a lot of problems if the amended claim language isn't mirrored in the written description (this does not apply to claim language found in the claims as filed).