Comments on: Q) 35 USC 112 p1 (10.02.8p)

By: Jun

Jun — Wed, 13 Jul 2011 23:17:29 +0000

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

By: Bob

Bob — Wed, 13 Jul 2011 19:36:28 +0000

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.

By: new study man

new study man — Sat, 09 Jul 2011 21:09:13 +0000

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.

By: ohsoobvious

ohsoobvious — Wed, 25 May 2011 19:20:15 +0000

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