Q) 35 USC 112 p1 (10.02.8p)

by Lizzie on April 28, 2009 · 7 comments

in Exam Concepts, Exam Questions

8. An application includes independent claims 1 and 2. Which of the following, in a reply to a non-final Office action, provides the proper basis for a rejection under 35 USC 112, first paragraph?

(A) Applicant amends claim 2 of the originally filed application by adding a limitation which was previously written only in claim 1 of the originally filed application, and one of ordinary skill in the art is enabled by the original disclosure to make and use the invention as claimed in amended claim 2.

(B) Applicant amends claim 1 of the originally filed application by adding a limitation that was written in the original disclosure of the application, but the original disclosure does not enable one of ordinary skill in the art to make or use the invention as claimed in amended claim 1.

(C) Applicant amends and broadens claim 2 by removing a limitation which was written in the original disclosure of the application, and one of ordinary skill in the art is enabled by the original disclosure to make and use the invention as claimed in amended claim 2.

(D) Applicant adds new matter to the disclosure, but does not amend the claims of the originally filed application, and one of ordinary skill in the art is enabled by the original disclosure to make and use the invention as described in each of the claims.

(E) None of the above.

8. ANSWER: The most correct answer is (B). MPEP § 2163.01. (A) is incorrect because the claims as filed in the original application are part of the disclosure, MPEP §§ 2163.03 and 2163.06(III), and claim 2 is enabled by the original disclosure. (C) is incorrect. The original disclosure enables claim 2. (D) is incorrect because although the specification should be objected to, the original disclosure enables each of the claims. MPEP § 2163.06(I). (E) is incorrect because (B) is correct.

{ 7 comments… read them below or add one }

1 ohsoobviousNo Gravatar May 25, 2011 at 3:20 pm

there was a related variant of this question on 5/18/11. It had something to do with when new matter should be rejected under 112 as lack of enablement or lack of WD, depending on whether the new matter was added to the claims or to the spec. check this distinction in 2100

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2 BobNo Gravatar July 13, 2011 at 3:36 pm

See 2163.06, heading I. Treatment of New Matter.

If new subject matter is added to the disclosure,
whether it be in the abstract, the specification, or the
drawings, the examiner should object to the introduction
of new matter under 35 U.S.C. 132 or 251 as
appropriate, and require applicant to cancel the new
matter. If new matter is added to the claims, the examiner
should reject the claims under 35 U.S.C. 112, first
paragraph – written description requirement.

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3 HSUNo Gravatar August 7, 2012 at 2:33 pm

I didn’t get the explanation for (D). Seems to me D is incorrect because it should be rejected under 35 U.S.C. 132 or 251, not 35 USC 112, first paragraph

4 PeggyNo Gravatar October 22, 2012 at 10:25 pm

HSU: Exactly. It doesn’t provide a proper basis for rejection under 112, it would be a proper basis for rejection under something else but that is not what it is asking.

5 new study manNo Gravatar July 9, 2011 at 5:09 pm

I thought “E” is the answer.

(B) makes this situation.
If the amended claim 1 fullfills written description requirement, the amended claim 1 still lacks enablement requirement.
35 USC 112, first paragraph requires enablement, written description, best mode.
“The original disclosure does not enable one of ordinary skill in the art to make or use the invention as claimed in amended claim 1”.

So, the amended claim 1 will bring NEW 35 USC 112, first paragraph rejection.

Someone, please give me a teaching.

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6 JunNo Gravatar July 13, 2011 at 7:17 pm

The call of the question is asking which of the following provides basis for rejection. B does, as you reasoned.

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7 youngNo Gravatar May 16, 2016 at 9:19 pm

On a side note, when a new matter is introduced to a SPECIFICATION, the examiner OBJECTS to the introduction of a new matter under the 35 USC 132 (or under the 35 USC 251 for reissue applications). It is when a new matter is introduced to a CLAIM, a REJECTION under the 35 USC 112(a) is proper. Also, even if the new matter is introduced to a specification, it may add new limitations to a claim indirectly; this is also subject to a rejection under the 35 USC 112(a).

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