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The Specification: Application v. Issued Patent

The Specification: Application v. Issued Patent. Why is the specification in the application almost exactly identical to that in the issued patent? Could it be different? When and when not?. When Can Applicant Amend the SPECIFICATION?. Whenever the claims can be amended.

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The Specification: Application v. Issued Patent

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  1. The Specification: Application v. Issued Patent Why is the specification in the application almost exactly identical to that in the issued patent? Could it be different? When and when not? PARK - SPEC SAME IN APP & PAT

  2. When Can Applicant Amend the SPECIFICATION? • Whenever the claims can be amended. - 37 CFR 1.121(b) for manner of amending specification, and - MPEP 714 Part I, for timing of any amendments. • As long as the amendment does not add NEW MATTER. 35 USC 132. PARK - SPEC SAME IN APP & PAT

  3. The NO NEW MATTER Rule • STATUTORY BASIS: 35 USC 132(a), last sentence “No amendment may introduce new matter into the disclosure [=specification & figures] of an application.” • When is an amendment to the specification NOT “new matter”? • If it is a correction of a typo or similar non-substantive change. • If it seems like “new matter” but is supported by any of the original claims, even though nothing in the original specification or has those words or ideas. MPEP 608.01(I). “Supported by a claim” often means just that the claim used the same words, words that did not appear in the specification as filed. • If a claim requires the “new matter,” what happens? - It is rejected under 35 USC 112 (lack of support in the specification). - Applicant can file a CONTINUATION-IN-PART and add the new matter to the CIP’s specification. But the risk is that the filing (priority) date will be lost for the claims of the CIP. PARK - SPEC SAME IN APP & PAT

  4. What is/is not NEW MATTER? More examples from the MPEP MPEP 608.04(a), 2nd sentence. “Depending on circumstances such as the adequacy of the original disclosure, the addition of inherent characteristics such as chemical or physical properties, a new structural formula or a new use may be new matter.” MPEP 706.03(o) New matter … may also include adding specific percentages or compounds after a broader original disclosure, or even the omission of a step from a method. … See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) and MPEP § 2163.05 for guidance in determining whether the addition of specific percentages or compounds after a broader original disclosure constitutes new matter. LEGAL RESEARCH TIP: MPEP provides case citations. PRACTICE TIP: You PETITION – rather than appeal - if you think the Examiner is wrong AND no claim rejections are involved. MPEP 608.04(c) If they are INHERENT, why are they new? PARK - SPEC SAME IN APP & PAT

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