Comments on: Q) Door Handle (10.03.24a) http://mypatentbar.com/2007/06/06/q36-door-handle/ Patent Bar Review and Study Guide Tue, 07 Feb 2012 03:15:12 +0000 http://wordpress.org/?v=2.9.2 hourly 1 By: Patfield http://mypatentbar.com/2007/06/06/q36-door-handle/#comment-13875 Patfield Mon, 01 Aug 2011 18:36:23 +0000 http://patentbar.wordpress.com/2007/06/06/q36-door-handle/#comment-13875 E is wrong for the following reason 2173.05(i) Negative Limitations "Any negative limitation or exclusionary proviso must have basis in the original disclosure". Because this negative limitation was not included in the original disclosure it should be objected to. E is wrong for the following reason

2173.05(i) Negative Limitations
“Any negative limitation or exclusionary proviso must have basis in the original disclosure”.

Because this negative limitation was not included in the original disclosure it should be objected to.

]]> By: PHOSITA http://mypatentbar.com/2007/06/06/q36-door-handle/#comment-8133 PHOSITA Wed, 02 Mar 2011 20:41:08 +0000 http://patentbar.wordpress.com/2007/06/06/q36-door-handle/#comment-8133 I believe it is because in (E) the limitation had to be added into the specification, as opposed to a negative claim limitation from a broader specification/description. Of course, adding new matter is not allowed - see 608.04 "New Matter," which cites "37 CFR 1.121 Manner of making amendments in applications: (f) No new matter. No amendment may introduce new matter into the disclosure of an application." 608.04 further states: "When new matter is introduced into the specification, the amendment should be objected to under 35 U.S.C. 132 ( 35 U.S.C. 251 if a reissue application) and a requirement made to cancel the new matter.... If the new matter has been entered into the claims or affects the scope of the claims, the claims affected should be rejected under 35 U.S.C. 112, first paragraph, because the new matter is not described in the application AS ORIGINALLY FILED." (emphasis added) I believe it is because in (E) the limitation had to be added into the specification, as opposed to a negative claim limitation from a broader specification/description. Of course, adding new matter is not allowed – see 608.04 “New Matter,” which cites “37 CFR 1.121 Manner of making amendments in applications: (f) No new matter. No amendment may introduce new matter into the disclosure of an application.”

608.04 further states: “When new matter is introduced into the specification, the amendment should be objected to under 35 U.S.C. 132 ( 35 U.S.C. 251 if a reissue application) and a requirement made to cancel the new matter…. If the new matter has been entered into the claims or affects the scope of the claims, the claims affected should be rejected under 35 U.S.C. 112, first paragraph, because the new matter is not described in the application AS ORIGINALLY FILED.” (emphasis added)

]]> By: Stephen http://mypatentbar.com/2007/06/06/q36-door-handle/#comment-3516 Stephen Fri, 13 Aug 2010 03:00:35 +0000 http://patentbar.wordpress.com/2007/06/06/q36-door-handle/#comment-3516 I have the same question. E would appear to be a proper amendment but I would still say D is "more correct." I don't see how the negative limitation adds a new claim though. The reason it was rejected in the first place was because "pulling means" was so broad that it already covered the "attached bar" method. That's why it was rejected for being anticipated. I would just remember D is the correct answer I guess... I have the same question. E would appear to be a proper amendment but I would still say D is “more correct.” I don’t see how the negative limitation adds a new claim though. The reason it was rejected in the first place was because “pulling means” was so broad that it already covered the “attached bar” method. That’s why it was rejected for being anticipated. I would just remember D is the correct answer I guess…

]]> By: patentguy http://mypatentbar.com/2007/06/06/q36-door-handle/#comment-2971 patentguy Sat, 10 Jul 2010 04:14:36 +0000 http://patentbar.wordpress.com/2007/06/06/q36-door-handle/#comment-2971 Why the negative limitation in 'E' introduce new matter? Is it because that by excluding the 'attached bar' as the pulling means, it effectively included all other possible pulling means and therefore effectively introduced new matter? Why the negative limitation in ‘E’ introduce new matter? Is it because that by excluding the ‘attached bar’ as the pulling means, it effectively included all other possible pulling means and therefore effectively introduced new matter?

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