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Author Topic: Changing the Spec based on Claims  (Read 839 times)

Roger Feld

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Changing the Spec based on Claims
« on: 09-01-07 at 01:24 pm »

How much can you modify/import into the spec from a claim with out getting a new matter rejection? Seems pretty subjective, but if I were to impose a particular means or reference a class of invention in a claim, then it seems open ended as to how much I can bring in. How do the examiners react to such changes? Is it legally possible, but not often done?


Thanks!
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patent_type

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Re: Changing the Spec based on Claims
« Reply #1 on: 09-02-07 at 08:04 am »

I'm not completely clear on what you are asking.  As a general proposition, you don't "modify/import into" the spec after the spec is filed (sure there are some examples, but not generally).  But the claims as originally filed are considered to be part of the spec.  So you can rely on *those* claims for support.  

But if you are asking if you can add a new claim and "import" that info into the spec, that will be new matter if the subject of the new claim is not already supported in the spec.

If you reference a "means" in the claim, and now want to add a different way to accomplish that means than what is already in the spec, that would be new matter.  If you have a generic term in the claim and now want to add a different species in that genus to the spec, that likely would also be new matter.
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