The 35 U.S.C. 112, First-Paragraph Rejection

MARK TERRY, ESQ.

In Ex parte Yufa, the Board of Patent Appeals affirmed an examiner’s rejection under the first paragraph of 35 U.S.C. 112. The disputed claim language concerned subject matter that the Board concluded was not adequately supported in the application as originally filed.

The applicant argued that ambiguous language and the application drawings disclosed the disputed feature. The Board rejected those arguments, explaining that quantitative limitations generally cannot be established merely by measuring a patent drawing when the specification does not provide the corresponding written description.

The written-description requirement asks whether the original disclosure reasonably conveyed to a skilled artisan that the inventor possessed the claimed subject matter at the filing date.

Lessons learned: When responding to a first-paragraph Section 112 rejection, identify clear support in the original specification. Reliance on drawings alone can be weak, especially when the amended claim introduces precise relationships or values not expressly described.