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In working with my examiner to address issues with the claims mentioned in a final rejection of my (pro se) software patent application, I changed one term in the claims from "word1 word2" to "word1 word3", and used a new word "word4" to describe something different that could be distinguished from "word1 word3". Each change occurs 6-7 times in the claims, as the term being clarified is important to the invention. Unfortunately, the words are common English words that by themselves have no specific software meaning—part, region, portion—and are used in a more general way elsewhere in the application.

I can see now that the original spec could be a little confusing, though I truly doubt a person skilled in the art would be confused (and I had numerous clear examples described as well, and marked in the drawings). But seeing how difficult and precise claims language needs to be, I can see the clarity problem from the examiner's point of view (I have made some significant improvements and the examiner has spoken positively about the chances of getting to allowance).

I cannot get a clear answer from the examiner, or the Inventors Assistance Center, to the question now facing me: To what extent can terminology be changed/added/removed from the specification and drawings without it being judged to be "new material"? The new terminology does not change the the invention in any way (How could distinguishing part, portion and region better possibly change it?), but simply describes 3 different aspects (of what the software works on and does) more clearly. I find some parts (portions, sections) of the MPEP that suggest such amendments could be allowed (especially §608.01 subsections o, a, and i), but it is not clear. Google searching has not helped either.

Thanks for any help here.

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2 Answers

They can be very sensitive to anything added in the spec or drawings unless it is already presented in one place and you are also putting it somewhere else, it is a dictionary definition and if the word has more than one meaning the one you intended is already clear, it is an obvious error with an obvious fix, or it is "inherent". You might need an affidavit from an unrelated person in the field to explain that it was inherent in what was there originally.

The MPEP section you pointed to says that a claim amendment might not be supported by the specification so you might need to add to the specification. That gets rid of the claim not supported by the spec. but throws you right into a "new matter" rejection. I would look at MPEP 2163.06   Relationship of Written Description Requirement to New Matter

One way you might think about it is, after you make the changes would a person of ordinary skill in the art react by thinking"Oh, now I get it!". If so, you probably added something that wasn't there.

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David,

The answer to your question can vary by Examiner. Technically, anything not disclosed in the spec can be considered new matter and face a 112 rejection, but some examiners are more lenient than others. Without knowing the specifics of your disclosure and/or claim language your question is difficult to address, but if you are concerned that mixing part, region, and portion in claim language may be confusing or lead to a 112, have you considered sticking to the original term (e.g., part, region, or portion) and prefacing it with "first," "second," "third," etc. So, for example's sake, "a part of a region of a portion" can become "a first part of a second part of a third part" (assuming the disclosure used the term "part").

George makes a good point about inherent disclosure (see MPEP 2163(I)(B)), you can argue that the new term you are using is implicitly or inherently supported in your disclosure (but you have to be very careful with such arguments so as not to fall into the trap of eluding that some part of your invention is/was obvious).

I suggest setting up an interview with the examiner, approaching him/her with proposed amendment language, and asking him/her to work with you on that. Your question "to what extent can material be changed ..." is too broad to answer generally, the answer varies with the specifics of the situation.

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