Q) Original disclosure (10.02.16p)

by Lizzie on April 28, 2009 · 9 comments

in Exam Concepts, Exam Questions

16. In which of the following situations, considered independently of each other, is the original, new, or amended claim supported in the application as filed?

(A) An amendment to the specification changing the definition of “holder” from “is a hook” to “is a hook, clasp, crimp, or tong” and no amendment is made of the claim, which uses the term “holder.” The amendment is filed one month after the application was filed. There was no previous supporting disclosure in the specification of the holder being a clasp, crimp, or tong.

(B) An amendment to the specification and claims changing the definition of “holder” from “is a hook” to “is a hook, clasp, crimp, or tong.” The amendment is filed one month after the application was filed. There was no previous supporting disclosure in the specification of the holder being a clasp, crimp, or tong.

(C) Original claim 1 in the application refers to “a holder,” and original claim 2 depends from and refers to claim 1 stating, “said holder is a hook, clasp, crimp, or tong.” There is no disclosure in the specification preceding the claims in the application as filed for the holder to be a clasp, crimp, or tong.

(D) An amendment is filed presenting a claim to an electrical insulating device, copied from a patent for the purpose of provoking an interference. The claim refers to “nonconductive plastic holder.” The application as filed contains a broad generic disclosure describing electrical insulating devices. The holder is described in the specification of the application as “conducting electricity.” There is no disclosure in the specification of the holder being “nonconductive.”

(E) All of the above.

16. ANSWER: (C). MPEP 2163.03, item I. Original claims constitute their own description. In re Koller, 613 F.2d 819, 204 USPQ 702 (CCPA 1980). (A) and (B) are incorrect. As stated in MPEP 2163.03, item I, “An amendment to the specification (e.g., a change in the definition of a term used both in the specification and claim) may indirectly affect a claim even though no actual amendment is made to the claim.” There is no supporting disclosure in the original description of the invention for the holder to a clasp, crimp, or tong. (D) is incorrect. MPEP 2163.03, item IV. A broad generic disclosure is not necessarily a sufficient written description of a specific embodiment, especially where the broad generic disclosure conflicts with the remainder of the disclosure. Fields v. Conover, 443 F.2d 1386, 170 USPQ 276 (CCPA 1970). (E) is not correct because (C) is correct.

{ 9 comments… read them below or add one }

1 TayNo Gravatar June 25, 2010 at 4:51 pm

Can someone explain? The question call doesn’t make sense. Seems like the point they’re getting at is that the original claims don’t need support in the spec. I understand that the original claims provide support for later amendments, but they still need to comport with 112 in the original filing.

the relevant part of 2163.03 only states that:
there is a strong presumption that an adequate written description of the claimed invention is present in the specification as filed.

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2 be_of_good_cheerNo Gravatar July 1, 2010 at 10:11 am

I’ll try:

Claim 1 as stated is the original claim as filed in the original application.
Since this is an original claim using the term “holder” we have some freedom in further narrowing this term without being pinned to the requirement that the term language used exists in the specification. Also correct answer C nicely further narrows the claims with dependend claim 2.

It’s important to take note that if this were NOT an original claim such a modification would be new matter if no support existed in the specification.

A contrasting example might be :
Original claim 1 in the application refers to “a fastener,” and original claim 2 depends from and refers to claim 1 stating, “said fastener is a snap, button, or velcro strap.”

(as the patent drafter we have freedom to make this any type of fastener we deem fit- it can be a snap, button, or cyrogenic seal as long as it’s still a fastener)

There is no disclosure in the specification preceding the claims in the application as filed for the holder to be a snap, button, or velcro strap.

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3 Number_27No Gravatar December 17, 2010 at 2:55 pm

Furthermore, 35 USC 112 par 1 second sentence reads “The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.”

original claims are part of the originally filed spec

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4 PipolagNo Gravatar June 29, 2011 at 3:27 pm

I don’t understand why (B) is wrong?

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5 qwackerNo Gravatar October 27, 2011 at 7:18 am

Because you’re adding new matter. “There was no previous supporting disclosure in the specification of the holder being a clasp, crimp, or tong.”

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6 biotech-ipNo Gravatar January 21, 2013 at 1:20 pm

Also, A and B state that the specification is being amended. That has to be wrong.

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7 biotech-ipNo Gravatar January 21, 2013 at 1:20 pm

right?

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8 UnipecNo Gravatar January 22, 2013 at 2:12 pm

Generally yes, but don’t miss the point of the question. Remember, obvious mistakes in the spec can be amended.

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9 Colorchem57No Gravatar February 4, 2013 at 11:01 am

Keep in mind that the claims are part of the disclosure, thus saying that the claim is not supported by the disclosure is circular. The specification is part of the disclosure. This said, the meanings of clasp, crimp, or tong will have their commonly accepted meaning and not any specific meeaning meant by the inventor if he/she meant something different than the common meaning. If the inventor had comeback with a new definition of these terms in the specification this would have been new matter.

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