Written Description - Newly Added Feature
Examiners may reject claims in some cases under the first paragraph of 35 U.S.C. § 112 as allegedly failing to comply with the written description requirement. Also,
when an enablement rejection from a previous Office Action is traversed, the enablement rejection is sometimes “reborn” as a written description rejection where
sufficient support for claimed features is not argued in the traversal. The written description requirement mandates that Applicants must describe claimed features in
the specification with “reasonable clarity.” However, Examiners sometimes take the position that antecedent support is required when a supported feature is amended
into the claims that is not the same precise term as discussed in the specification (for instance, perhaps the claims recite “program” while the specification uses
“code” or “application”). Such a rejection is improper where support for the claimed features exists with reasonable clarity. In such cases, it may be beneficial to
traverse the rejection along the lines of the following.
On pages [PAGE NUMBERS], the Office Action rejected claims [CLAIM NUMBERS] under 35 U.S.C. § 112, first paragraph, as allegedly failing to comply with the written
description requirement. Specifically, the Office Action alleged that “[SPECIFIC REJECTION LANGUAGE HERE].” Applicants respectfully traverse the rejection.
To satisfy the written description requirement under the first paragraph of 35 U.S.C. § 112, a patent specification must describe the claimed invention in sufficient
detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention (see MPEP § 2163(I)). This possession may be
shown in any number of ways. For example, for newly added claim limitations, the MPEP requires that the specification provide support through express, implicit, or
inherent disclosure (see MPEP § 2163(I)(B)). To determine whether the specification provides express, implicit, or inherent disclosure, the MPEP dictates that the
factual inquiry to be used is whether the specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, Applicants were
in possession of the invention as now claimed (see Id.). Applicants respectfully submit that such reasonable clarity is present in the specification.
In the present case, the Office Action alleged that there is no antecedent support for [FEATURE]. However, per the above, Applicants respectfully note that this is not
the standard for compliance with the written description requirement. The specification clearly discusses [FEATURE AND SUPPORTING SECTIONS OF SPECIFICATION]. As such,
while the present application does not explicitly use the word [FEATURE], Applicants respectfully submit that a person of ordinary skill in the art would readily
appreciate that [FEATURE] was contemplated in light of the clear support discussed above.
Accordingly, it is respectfully submitted that the rejection is overcome and respectfully requested that the rejection be withdrawn.
In addition to traversing the written description rejection, Applicants may choose to politely remind the Examiner that the basis for the rejection must be reviewed in
view of the record as a whole, including amendments, arguments, and any evidence submitted by Applicants (see MPEP § 2163(III)(B)). If the Examiner maintains the written
description rejection in a subsequent Office Action, the Examiner is required to fully respond to Applicants' rebuttal and properly treat any further showings submitted
by Applicants in the reply. Otherwise, the Examiner’s subsequent Office Action is incomplete under 37 C.F.R. § 1.104(b), which requires that “the examiner’s action will
be complete as to all matters” and MPEP § 707.07(f) (see this related post on an