Thursday, January 10, 2013, 9:12 AM

Drawings support for claim amendments

Claims in a patent application are often amended (with deletions and/or additions) during examination.  In order to avoid adding new matter, there must be support for the claim amendment in the patent application as filed.  Sometimes, an examiner will require literal support for the amended claim language.  This means the examiner will sometimes reject a claim amendment because the actual wording for the amendment is not found in the patent application as filed.  What can we do when this claim language in the amendment is important for the advancement of the application?
One option is to search more carefully in the application as filed, to find suitable language for an amendment.  Usually, this process was carefully followed during the writing of the claim amendment, and sometimes there just aren’t the right words available in the application as filed.
Another option is to state, in an argument, that the drawings clearly show the feature or action that we are claiming in the amendment.  Sometimes this argument suffices.  A variation on this is to amend the specification with a description of the feature or action in the drawing, provided this is clearly shown.  Then, the claims can be amended using a subset of the wording in the specification amendment.  This procedure relies on the drawings and establishes consistent language in the amended specification and the amended claims.

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