Wednesday, September 9, 2009

Identifying support in the specification for amendments (Part II)

In a previous post (here), I explained why I don't think Applicants are required to identify support in the specification when making claim amendments. Personally, I don't generally identify support for claim amendments until challenged by the Examiner, because I believe that fewer statements in prosecution history are better than more. (All things being equal.)

Nonetheless, sometimes I do point to a portion of the specification when making a claim amendment. I use a sliding scale: with amendments that I suspect may trigger a §112 rejection, I am more likely to preemptively point to support in the specification. I point to as many areas of the specification (and drawings, if relevant) as possible, and use "wiggle language" stating that these aren't the only relevant portions.

This strategy don't-say-anything-until-forced-to strategy seems to work for me: I'd say far less than 10% of my amendments receive a §112 rejection. As with all things in patent prosecution, your mileage may vary.


  1. Hi Karen,

    After 112, what, in your opinion, would be the next rejection for identifying support in the spec - prior art (102, 103) or 101? Thanks.


  2. Sean, not sure what you mean by rejection "for identifying support in the spec". As far as "next rejection" goes, the Examiner shouldn't wait to give you other types of rejections. That is, as long as a claim interpretation is possible, he's supposed to include all rejections, even if the claim is indefinite (112 2nd) or possibly something you're not entitled to (112 1st). There's a statement in the MPEP to that effect.

  3. Hi, Could you give an example of one of your patent applications we could look up on PAIR to see how you've done this? I'd be curious to read your "wiggle language." OR would you post an extract here? Thanks.

  4. >I'd be curious to read your "wiggle language."

    Something like:

    Claimed feature "x" is described, **for example, in at least** paras. 0042, 0057--0060 and FIGs. 3 and 4.