by Steve Driskill | Sep 20, 2016 | [sub] written description, Adequate Disclosure
A disclosure that adequately identifies an invention by its known properties may be used to support later claims to undisclosed yet inherent properties. Here, for example, a protein described in a priority application in terms of a partial amino acid sequence and...
by Steve Driskill | Aug 15, 2016 | [sub] written description, Adequate Disclosure
Original claims can provide written description support even for later added claims. Here, for example, the asserted claims were found to be supported by the original disclosure even though the specification focused on a narrower embodiment and even though the...
by Steve Driskill | Mar 9, 2016 | [sub] specification, [sub] written description, Adequate Disclosure, Estoppel / Disclaimer
Distinguishing the prior art as “undesired” is equivalent to distinguishing it as “inferior” and may therefore limit the scope of the claims as necessarily excluding the undesired features. Here, for example, a broad claim added during an interference to cover a...
by Steve Driskill | Mar 1, 2016 | [sub] printed publications, [sub] written description, Adequate Disclosure, Prior Art
(1) The PTO must do more than state that a claim term is not literally recited in the specification to establish a lack of written description support for that term. Here, for example, the specification was found to adequately support the terms “endorsement tag” and...
by Steve Driskill | Nov 13, 2015 | [sub] written description, Adequate Disclosure
Negative claim limitations may be supported by the specification’s description of alternative features—even without articulating advantages or disadvantages of each feature—which can constitute a “reason to exclude” under the standard for supporting negative...
by Steve Driskill | Aug 24, 2015 | [sub] written description, Adequate Disclosure
An application’s disclosure of a genus does not, without more, imply written description support of a particular species. Here, for example, a parent application’s disclosure of a “rating factor” was found to be insufficient to support a child application’s recitation...