Q) Added Claims in CIP (10.03.25p)

by admin on April 18, 2010 · 11 comments

in Exam Questions

Recent test takers report that question #25 from the October 2003 (PM) test is in the patent bar exam database.

25. A registered practitioner files a nonprovisional utility application in 2000. In 2002, the practitioner files a continuation-in-part application and claims benefit of the filing date of the 2000 application for the 2002 application. Thereafter, the practitioner amends the 2002 application to include claims that were not present in either the originally filed 2000 application or the originally filed 2002 application. The primary examiner properly concludes that the added claims are not supported by the original disclosure in either application. Which of the following is in accord with the patent laws, rules and procedures as related in the MPEP?
(A) The added claims are rejected for lack of written description under 35 USC 112, first paragraph.
(B) The added claims are rejected as new matter under 35 USC 132.
(C) The added claims are denied benefit of the filing date of the 2000 application.
(D) (A) and (B).
(E) (A) and (C).

ANSWER: (E) is the most correct answer. Both (A) and (C) are correct. MPEP § 2163.01, under the heading “Support For The Claimed Subject Matter In The Disclosure,” states that “[I]f the examiner concludes that the claimed subject matter is not supported [described] in an application as filed, this would result in a rejection of the claim on the ground of a lack of written description under 35 U.S.C. 112, first paragraph, or denial of the benefit of filing date of a previously filed application.” (B) is incorrect. MPEP § 2163.01 states that unsupported claims “should not be rejected or objected to on the ground of new matter. As framed by the court in In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981), the concept of new matter is properly employed as a basis for objection to amendments to the abstract, specification or drawings attempting to add new disclosure to that originally presented.” (D) is incorrect because (B) is incorrect.

{ 11 comments… read them below or add one }

1 MirandaNo Gravatar February 20, 2012 at 4:47 pm

Someone please help me understand why (C) is a correct answer. The claims will no doubt be rejected as being unsupported, so isn’t denial of any priority benefit a moot point?

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2 RBL 5/12/12No Gravatar May 3, 2012 at 11:20 am

I simply operate under the assumption that denying a claim of its entire existence via rejection eliminates every benefit that could potentially follow its existence, including its ability to claim any type of benefit.

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3 KFNo Gravatar March 2, 2012 at 10:15 pm

Miranda-I think of it this way. If the claims are rejected on a basis of lack of written description because they are unsupported in the application, then as a result of that rejection they are denied the benefit of the filing date-here the filing date of the 2000 application. I understand where you are coming from tho, but if you lose one, you lose all here.

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4 MirandaNo Gravatar March 3, 2012 at 11:37 am

I am still not understanding this- if the unsupported claims are rejected, won’t the practitioner have to withdraw/cancel them? I would think the benefit claim wouldn’t even have to be addressed until a claim is accepted/entered.

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5 justpassedNo Gravatar March 7, 2012 at 5:22 pm

you’re assuming that if there’s no support then there shouldn’t be a benefit claim and that is incorrect. Say for example, if the prior (co-pending) application has a claim or claim element that is also being rejected for lack of written support (based on the specification) and the continuation-in-part (CIP) has the same claim. The examiner can also reject the claim in the CIP for lack of written description/support but the CIP nevertheless can still claim the benefit of the prior application still. I know that isn’t the case here but just wanted to put it out there in case if this is where your confusion lies.

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6 MirandaNo Gravatar March 10, 2012 at 12:42 pm

I understand that the supported claims in the CIP can always claim the benefit of the parent that supports it.
I understand you can add new matter to an originally filed CIP that canNOT claim the benefit of the parent that doesn’t support it. (they get the child filing date).
HERE’s where it gets fuzzy:
I understand you canNOT LATER by amendment add MORE new matter to a CIP that is UNSUPPORTED by its OWN original disclosure, correct?
I understand that these additional new matter claims would be rejected based on 112 written description, correct?
I understand that the applicant would have to withdraw/cancel these claims, correct?
What I DONT understand is: why would the examiner need to deny benefit to these cancelled claims since they are going to be deleted anyway. So then there are no claims left that would be able to be denied a benefit. does anyone understand what I’m trying to ask?

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7 SabrinaNo Gravatar April 3, 2012 at 4:05 pm

Hi Miranda:
Here is my two cents…hope it helps with some of the fuzzyness.

2163.06
I.TREATMENT OF 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. In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981). THE EXAMINER SHOULD STILL CONSIDER the subject matter added to the claim in making rejections based on prior art SINCE THE NEW MATTER REJECTION MAY BE OVERCOME BY THE APPLICANT.

I think the reason a filing date has to be assigned to the claim because the MPEP contemplates the possibility that “NEW MATTER REJECTION MAY BE OVERCOME BY THE APPLICANT.” As part of the analysis in determining the filing date for the claim, the examiner would conclude that the claim would not get the 2000 filing date.

As an aside, you are correct that it is unlikely that the applicant will be able to overcome the rejection and will probably end up withdrawing the claim (or maybe file another CIP); however, all of that will happen AFTER the examiner 1. determines the filing date for the claim, and 2. rejects the claim.

8 SabrinaNo Gravatar April 3, 2012 at 4:17 pm

sorry…just noticed my grammar:( The second to last paragraph should read:

I think the reason a filing date has to be assigned to the claim is because the MPEP contemplates the possibility that the “NEW MATTER REJECTION MAY BE OVERCOME BY THE APPLICANT.” As part of the analysis in determining the filing date for the claim, the examiner would conclude that the claim would not get the 2000 filing date.

wish we could edit our posts…

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9 MirandaNo Gravatar April 3, 2012 at 7:01 pm

Thanks, Sabrina! Your post clarifies the exact issue I was wondering about. Now that I think of it, it makes perfect sense. Of course the examiner should be prepared in case the applicant overcomes the rejection.

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10 SolNo Gravatar April 3, 2012 at 9:45 pm

Thanks. I understand C is correct but also feel it is moot. Now I understand, the Examiner neverthelss needs to give a date to the rejected claims and that date is not 2000 but 2002. Then the Examiner can pull out things before 2002 as prior art to do more rejections of the claims.

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11 ceejayNo Gravatar November 5, 2013 at 10:24 pm

Yes, I agree with Sabrina (April 3, 2012 at 4:05 pm). I am a patent examiner, and we are instructed to examine claims even if the claims are supported by matter that appears new to us.

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