35 U.S.C. 112: Specification
We've covered patentability rejections under 35 U.S.C. 101. We've also clarified matters of obviousness as outlined in 35 U.S.C. 103. Next we'll cover rejections under 35 U.S.C. 112.
An examiner might stamp an application as rejected under 35 U.S.C. 112 if the specification is not acceptable.
Again, the specification is one of the most important parts of a patent application. Specifications describe the invented subject matter, providing a detailed background and ending with the claims. But there's plenty more. The specification must also contain a written description, an enablement and the best mode of making and using the invention. In addition to having these three requirements, all of the components of the specification must make sense in relation to one another, especially to the claims, otherwise the application will be deemed unclear and rejected under 35 U.S.C. 112.
There are six separate paragraphs under 35 U.S.C. 112. These are referred to as the 1st through 6th paragraphs. A rejection may be made under more than one paragraph of this statute and in combination with other statutes as well.
The 1st paragraph of 35 U.S.C. 112 discusses the three requirements for the specification. Once again, these three requirements are the written description, an enabling disclosure and the best mode. We will discuss each of these in detail next.
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