Friday, September 4, 2009

Must you identify support for claim amendments? (Part I)

Here's a basic patent prosecution question: are you required to identify support in the specification when making claim amendments?

My answer to this question is: No, Applicants are not required to do so. One portion of the MPEP does baldly state that Applicants should identify support in the spec. [I'll get to that in a minute.] However, "should" is not "must", and that's why I say Applicants are not required to do so.

I'll go further and say that I don't think the MPEP, when read as a whole, even says that Applicants "should" do so. But I've talked to a number of practitioners who take the opposite position, so I in this post I'll explore reasons why I think this is a commonly held belief. In future posts, I'll discuss a) reasons for and against providing support for claim amendments even if not required, and b) what actions an Examiner is and is not entitled to take if you don't.

I think one reason might be confusion about the term "new matter." Technically, new matter refers to material added to the "disclosure" (specification, drawings, and abstract), not to the claims. So while MPEP § 2163.06 does state that "Applicant should therefore specifically point out the support for any amendments made to the disclosure," that doesn't apply to the claims. This section also explains the distinction between a new matter objection to the specification and a written description rejection of a claim.

The most obvious reason for holding that Applicants should identify support in the spec is this bald statement in MPEP § 2163.II.A:

There is a strong presumption that an adequate written description of the claimed invention is present in the specification as filed, Wertheim, 541 F.2d at 262, 191 USPQ at 96; however, with respect to newly added or amended claims, applicant should show support in the original disclosure for the new or amended claims.
(Emphasis added.)

As support for this "should" statement, MPEP 2163.II.A goes on to cite to other sections of the MPEP – which do not support its position:

...See MPEP § 714.02 and § 2163.06 ("Applicant should * * * specifically point out the support for any amendments made to the disclosure.");
(Emphasis added.)

As noted above, § 2163.06 refers to the disclosure, not the claims. And although MPEP § 714.02 states (citing CFR § 1.111) that an Applicant is required to "point out the patentable novelty" and "how the amendments avoid such references or objections", it says nothing at all about pointing to support in the spec. Nor does the final cite in MPEP 2163.II.A support the position "should provide support for claim amendments" :

...and MPEP § 2163.04 ("If applicant amends the claims and points out where and/or how the originally filed disclosure supports the amendment(s), and the examiner finds that the disclosure does not reasonably convey that the inventor had possession of the subject matter of the amendment at the time of the filing of the application, the examiner has the initial burden of presenting evidence or reasoning to explain why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims.
(Emphasis added.)

This cite to MPEP § 2163.04 is not on point because it describes what the Examiner is required to do if the Applicant does point out support, not what the Applicant should or must do so.

Thus, I think the MPEP is inconsistent on this basic issue, and when read as a whole, does not even clearly say that Applicants "should" provide support for claim amendments.

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