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Author Topic: Old subject matter in claims, New subject matter in spec = CIP or Continuation?  (Read 158 times)

phoenixsplash

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Is an application with old subject matter in the claims, but with new subject matter in the specification, properly characterized as a continuation or as a CIP?
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mersenne

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I don't think the rules require anything special of a CIP (i.e., you can call something a CIP that is actually a CON, or call a CON a CIP).  But if you put new matter in a CON, it should be rejected, while it's OK in a CIP.

Your situation doesn't make sense to me: if you aren't claiming the new matter, then you don't need it in the spec (unless the original spec was non-enabling, maybe?)  Recall that original claims are deemed to support themselves, at least; so you'd only need to do this if the examiner can force you to amend the claims in a way that's clearly not supported elsewhere in the spec.
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