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Author Topic: claims provide support?  (Read 659 times)

novobarro

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claims provide support?
« on: 06-12-18 at 06:06 pm »

My original claims include a feature that a material is comprised of X in an independent claim, and comprised of Y in a dependent claim.

The specification and drawings show Y, but not X.

The Examiner objects to the drawings to say that X is not shown. 

I amended the spec to say that Y can also be X.

The Examiner maintained his objection to the drawings and also said my amendment to the spec is new matter.

Is the Examiner correct?  I thought the original claims can provide support for amendments to the spec?  Should i add an entirely new drawing showing Y?
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smgsmc

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Re: claims provide support?
« Reply #1 on: 06-12-18 at 06:26 pm »

My original claims include a feature that a material is comprised of X in an independent claim, and comprised of Y in a dependent claim.

The specification and drawings show Y, but not X.

The Examiner objects to the drawings to say that X is not shown. 

I amended the spec to say that Y can also be X.

The Examiner maintained his objection to the drawings and also said my amendment to the spec is new matter.

Is the Examiner correct?  I thought the original claims can provide support for amendments to the spec?  Should i add an entirely new drawing showing Y?
<<Emphasis added.>>  What you wrote is a bit muddled.  If the independent claim reads "the material comprises X", then do you mean that the dependent claim reads "the material further comprises Y" (that is, the material comprises X+Y)?  In which case, you can't amend the spec to state "Y can also be X".

Or, do you mean the independent claim reads "the material comprises X" and the dependent claim reads "the X comprises Y", such as
"the material comprises a metal" and "the metal comprises iron"?
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novobarro

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Re: claims provide support?
« Reply #2 on: 06-12-18 at 06:49 pm »

Sorry,
Actually X and Y are in two dependent claims, not the independent claim.
So, dependent claim 1 , the material comprises X
Dependent claim 2, the material comprises Y.
« Last Edit: 06-12-18 at 09:05 pm by novobarro »
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smgsmc

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Re: claims provide support?
« Reply #3 on: 06-12-18 at 09:08 pm »

Sorry,
Actually X and Y are in two dependent claims, not the independent claim.
OK.  That makes more sense.  I would suggest you schedule a phone interview with the Examiner to discuss the following response:

(1) Since an original claim is part of the original disclosure, you should be able to amend the spec to add something along the lines of "In an embodiment, the material is (or includes) X." without adding new matter.  Some Examiners will allow a paraphrase of the claim at the appropriate spot in the spec for smoother language. Others won't.  In that case, you can resort to adding a dangling paragraph towards the end along the lines of

Disclosed is the following:

(copy the appropriate claims verbatim if the Examiner insists; otherwise, rewrite the claims in more flowing English if the Examiner allows).

(2) For the drawing objection, just add a new drawing that includes X.  You'll need to amend the spec at the appropriate spot along the lines of "Fig. __ shows an embodiment in which the material is (or includes) X."  And, of course, amend the Brief Description of Drawings.

« Last Edit: 06-12-18 at 10:27 pm by smgsmc »
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novobarro

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Re: claims provide support?
« Reply #4 on: 06-13-18 at 01:14 am »

Thanks for the suggestion!  Unfortunately, the client did not authorize an interview.  Do you know what MPEP section can back me up on the original claims giving me support for amendments to the spec?  I haven't been able to find it.
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lolstar

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Re: claims provide support?
« Reply #5 on: 06-13-18 at 01:27 am »

Thanks for the suggestion!  Unfortunately, the client did not authorize an interview.  Do you know what MPEP section can back me up on the original claims giving me support for amendments to the spec?  I haven't been able to find it.
It seems like 608.04(a) and 2163.06 would be fine. 608.04(a):

"Matter not present on the filing date of the application in the specification, claims, or drawings that is added after the application filing is usually new matter."

2163.06 might be even better:

"If an applicant amends or attempts to amend the abstract, specification or drawings of an application, an issue of new matter will arise if the content of the amendment is not described in the application as filed. Stated another way, information contained in any one of the specification, claims or drawings of the application as filed may be added to any other part of the application without introducing new matter."

That being said, if possible, I would really suggest you contact the examiner about it. If not possible then oh well, good luck.
« Last Edit: 06-13-18 at 01:30 am by lolstar »
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I am not representing the USPTO. I am not your lawyer or examiner. This is not legal advice.

smgsmc

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Re: claims provide support?
« Reply #6 on: 06-13-18 at 06:49 am »

Thanks for the suggestion!  Unfortunately, the client did not authorize an interview.  Do you know what MPEP section can back me up on the original claims giving me support for amendments to the spec?  I haven't been able to find it.
In addition to lolstar's cites, from the MPEP (Latest Revision January 2018 [R-08.2017]), 2163.06.III:


III.   CLAIMED SUBJECT MATTER NOT DISCLOSED IN REMAINDER OF SPECIFICATION

The claims as filed in the original specification are part of the disclosure and therefore, if an application as originally filed contains a claim disclosing material not disclosed in the remainder of the specification, the applicant may amend the specification to include the claimed subject matter. In re Benno, 768 F.2d 1340, 226 USPQ 683 (Fed. Cir. 1985). Form Paragraph 7.44 may be used where originally claimed subject matter lacks proper antecedent basis in the specification. See MPEP 608.01(o).

I would try to convince your client that an interview is well worth it.  I've been through this mucho times on applications I've inherited (written by others).  Examiners vary widely in permitted degree of paraphrase (if at all) and placement of the claimed subject matter within the written description portion.
« Last Edit: 06-13-18 at 07:06 am by smgsmc »
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novobarro

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Re: claims provide support?
« Reply #7 on: 06-13-18 at 12:20 pm »

Thanks everybody!  This has been very helpful.. I'm going to go ahead and add a new figure for X.  Fig. 1 currently discloses Y.  I'm thinking to rename Fig. 1 to Fig. 1A and then add new Fig. 1B to disclose X.  Can figures be renumbered like this?   for the explanation of these changes in the response, I can simply say that Fig. 1 has been renumbered to Fig. 1A and new Fig. 1B has been added to show an embodiment in which the material is (or includes) X?
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smgsmc

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Re: claims provide support?
« Reply #8 on: 06-13-18 at 01:45 pm »

Thanks everybody!  This has been very helpful.. I'm going to go ahead and add a new figure for X.  Fig. 1 currently discloses Y.  I'm thinking to rename Fig. 1 to Fig. 1A and then add new Fig. 1B to disclose X.  Can figures be renumbered like this?   for the explanation of these changes in the response, I can simply say that Fig. 1 has been renumbered to Fig. 1A and new Fig. 1B has been added to show an embodiment in which the material is (or includes) X?
You would have to submit an amended sheet changing Fig. 1 to Fig. 1A, as well as amend the references to Fig. 1 in the spec.  Not too much work.  Alternatively, you can just add a new figure at the end of the current list.  Figure numbers do not need to be introduced sequentially in the spec.
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novobarro

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Re: claims provide support?
« Reply #9 on: 06-14-18 at 11:35 am »

Adding Fig. 1B, the top of the sheet must be designated as "New Sheet" correct? MPEP 714.
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