Comments on: 35 USC 112, 1st paragraph (Specification) http://mypatentbar.com/2007/11/28/35-usc-112-1st-paragraph/ Patent Bar Review and Study Guide Sat, 19 May 2012 22:04:39 +0000 http://wordpress.org/?v=2.9.2 hourly 1 By: 182.454545454545 http://mypatentbar.com/2007/11/28/35-usc-112-1st-paragraph/#comment-1170 182.454545454545 Sun, 06 Dec 2009 06:42:43 +0000 http://mypatentbar.com/2007/11/28/35-usc-112-1st-paragraph/#comment-1170 hsIKkA <a href="http://bikagejjachy.com/" rel="nofollow">bikagejjachy</a>, [url=http://qwcpgioxlwwn.com/]qwcpgioxlwwn[/url], [link=http://oshmqzmnwmul.com/]oshmqzmnwmul[/link], http://wkusidwnilvi.com/ hsIKkA bikagejjachy, [url=http://qwcpgioxlwwn.com/]qwcpgioxlwwn[/url], [link=http://oshmqzmnwmul.com/]oshmqzmnwmul[/link], http://wkusidwnilvi.com/

]]> By: Sean http://mypatentbar.com/2007/11/28/35-usc-112-1st-paragraph/#comment-1169 Sean Thu, 07 May 2009 22:46:59 +0000 http://mypatentbar.com/2007/11/28/35-usc-112-1st-paragraph/#comment-1169 Can the applicant overcome a 112, para 1 rejection simply by amending the specification as opposed to amending the claims to agree with the spec, or arguing inherent or implied disclosure in the spec, or arguing that the missing alleged essential matter on which the rejection was based is in fact not essential? But since the specification is disclosure embodied, amending it to agree with the claims is risky because of the "no new matter" rule. Correct? Thank you in advance. Can the applicant overcome a 112, para 1 rejection simply by amending the specification as opposed to amending the claims to agree with the spec, or arguing inherent or implied disclosure in the spec, or arguing that the missing alleged essential matter on which the rejection was based is in fact not essential?

But since the specification is disclosure embodied, amending it to agree with the claims is risky because of the “no new matter” rule. Correct?

Thank you in advance.

]]> By: Nik http://mypatentbar.com/2007/11/28/35-usc-112-1st-paragraph/#comment-1168 Nik Fri, 08 Feb 2008 21:48:22 +0000 http://mypatentbar.com/2007/11/28/35-usc-112-1st-paragraph/#comment-1168 As the note re: ranges and failing to meet the written description requirement, the 112(1) issue with the "at least 30%" language is that "at least" has no upper limit, and thus is not supported by the as-filed specification. Claiming an endpoint within a range described in the as-filed specification, or even one outside the as-filed range is permissible in certain instances. See In re Wertheim (the specification need not provide ipsis verbis (word for word) support for all claim elements; rather, support for the claim elements may be found in the express, implicit, and inherent disclosuire of the as-filed specification and claims) As the note re: ranges and failing to meet the written description requirement, the 112(1) issue with the “at least 30%” language is that “at least” has no upper limit, and thus is not supported by the as-filed specification. Claiming an endpoint within a range described in the as-filed specification, or even one outside the as-filed range is permissible in certain instances. See In re Wertheim (the specification need not provide ipsis verbis (word for word) support for all claim elements; rather, support for the claim elements may be found in the express, implicit, and inherent disclosuire of the as-filed specification and claims)

]]>