I remember hearing of a case where the Court found that original claims could be considered part of the specification. Is this true, and, if so, what case is it?

This could be used to overcome a §112 rejection, for example, if a claim was for a chair with four legs, and the specification was silent on the chair having legs.

1 Answer 1


Yes, they are, and are used like you have mentioned. The most direct answer to your question is in the MPEP (here):

The claims as filed in the original specification are part of the disclosure and, therefore, if an application as originally filed contains a claim disclosing material not found in the remainder of the specification, the applicant may amend the specification to include the claimed subject matter. In re Benno, 768 F.2d 1340, 226 USPQ 683 (Fed. Cir. 1985).

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