Reply to office action scope

1

If you reply to office action does the same rules apply as in normal amendments? That is:

  1. That is you may not amend beyond the scope of the original body of the specification.
  2. You may not amend beyond the scope of the original claims.
  3. Your claims must be fairly based on the body of the original application.

Deon P Hugo

Posted 2015-06-19T19:44:58.930

Reputation: 413

Answers

1

The specification, and not the original claims limit the available subject matter of amended claims. Therefore, new claims may be submitted as long as (per above) no new matter is introduced.

PatPros

Posted 2015-06-19T19:44:58.930

Reputation: 11

0

Your amendments should always gain support form your specification. Otherwise you are introducing "new matter," which is not permitted. That being said, keep in mind that you can argue support from things like your Figures, etc. If you "showed" something, you may have adequate support to avoid new matter rejections.

You can read the relevant sections in the MPEP, try 7.31.01, where the relevant statute that is cited against new matter:

"The following is a quotation of 35 U.S.C. 112(a):

(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.

The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention."

Harvard

Posted 2015-06-19T19:44:58.930

Reputation: 81