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35 USC 112 1st and 2nd

Article Index

35 USC 112 1st and 2nd :

There are three requirements for the specification under 35 U.S.C. § 112 ¶ 1:

1.     a written description of the invention

2.     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

3.     the best mode contemplated by the inventor of carrying out the invention

The MPEP covers the written description requirement in detail from Section 2163 through Section 2163.07(b).

The written description requirement is for all practical purposes about new matter.  There is a strong presumption that an adequate written description is present when the application is filed.  Questions on adequate written description for originally filed claims occasionally occur in specialized biotech and chemical cases.  But for mechanical cases an adequate written description of an original claim would rarely, if ever be appropriate.  The time to be alert for a written description issue is after amendment of the application since that is when new matter is likely to be inserted.  Claims containing or affected by new matter are rejected under 35 U.S.C. § 112 ¶ 1 for failing to comply with the written description requirement.  The question of an adequate written description also arises in the context of determining whether a claimed invention is entitled to the benefit of an earlier priority date or effective filing date under 35 U.S.C. 119, 120, and 365(c).

The standard for determining compliance with the written description requirement is best stated as whether the disclosure of the application reasonably conveys to those skilled in the art that the inventor was in possession, at the time of filing the application, of the invention now claimed.