2. To satisfy the written description requirement of the first paragraph of 35 USC 112, an applicant must show possession of the invention. An applicant’s lack of possession of the invention may be evidenced by:
(A) Describing an actual reduction to practice of the claimed invention.
(B) Describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention.
(C) Requiring an essential feature in the original claims, where the feature is not described in the specification or the claims, and is not conventional in the art or known to one of ordinary skill in the art.
(D) Amending a claim to add a limitation that is supported in the specification through implicit or inherent disclosure.
(E) Amending a claim to correct an obvious error by the appropriate correction.
2. ANSWER: (C) is the most correct answer. See, “Guidelines for Examination of Patent
Applications under 35 U.S.C. § 112, ¶ 1, ‘Written Description’ Requirement,” 66 F.R. 1099,
1105 (Jan. 5, 2001) left column, first paragraph. “The claimed invention as a whole may not be
adequately described if the claims require an essential or critical feature that is not described in
the specification and is not conventional in the art or known to one of ordinary skill in the art.”
(A) is not the most correct answer. See, “Guidelines for Examination of Patent Applications
under 35 U.S.C. § 112, ¶ 1, ‘Written Description’ Requirement,” 66 F.R. 1099, 1104 (Jan. 5,
2001) right column, last paragraph. Describing an actual reduction to practice of the claimed
invention is a means of showing possession of the invention. (B) is not the most correct answer.
See, “Guidelines for Examination of Patent Applications under 35 U.S.C. § 112, ¶ 1, ‘Written
Description’ Requirement,” 66 F.R. 1099, 1104 (Jan. 5, 2001) right column, last paragraph. (D)
is not the most correct answer. See, “Guidelines for Examination of Patent Applications under
35 U.S.C. § 112, ¶ 1, ‘Written Description’ Requirement,” 66 F.R. 1099, 1105 (Jan. 5, 2001), left
column, second paragraph, which states, “While there is no in haec verba requirement, newly
added claim limitations must be supported by in the specification through express, implicit, or
inherent disclosure.” (E) is not the most correct answer. See, “Guidelines for Examination of
Patent Applications under 35 U.S.C. § 112, ¶ 1, ‘Written Description’ Requirement,” 66 F.R.
1099, 1105 (Jan. 5, 2001), left column, second paragraph, which states, “An amendment to
correct an obvious error does not constitute new matter where one skilled in the art would not
only recognize the existence of the error in the specification, but also recognize the appropriate
correction.”
The answer can be found at MPEP2163.I.A.
I got something very similar on 3/19/12. Know how possession can be demonstrated.
Also found this in 2163.04.I:
A simple statement such as “Applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation ‘____’ in the application as filed.” may be sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported.
Sorry. I don’t know why I posted this. The answer is verbatim in the text and this section is more attenuated than necessary to get to the answer.