New matter: 132 objection and 112 rejection

Q) 35 USC 112 p1 (10.02.8p)

8. An application includes independent claims 1 and 2. Which of the following, in a reply to a non-final Office action,

provides the proper basis for a rejection under 35 USC 112, first paragraph?

(A) Applicant amends claim 2 of the originally filed application by adding a limitation which was previously written

only in claim 1 of the originally filed application, and one of ordinary skill in the art is enabled by the original

disclosure to make and use the invention as claimed in amended claim 2.

(B) Applicant amends claim 1 of the originally filed application by adding a limitation that was written

in the original disclosure of the application, but the original disclosure does not enable one of ordinary skill

in the art to make or use the invention as claimed in amended claim 1.

(C) Applicant amends and broadens claim 2 by removing a limitation which was written in the original disclosure

of the application, and one of ordinary skill in the art is enabled by the original disclosure to make and use

the invention as claimed in amended claim 2.

(D) Applicant adds new matter to the disclosure, but does not amend the claims of the originally filed application,

and one of ordinary skill in the art is enabled by the original disclosure to make and use the invention as described

in each of the claims.

(E) None of the above.

8. ANSWER: The most correct answer is (B). MPEP § 2163.01. (A) is incorrect because the claims as filed

in the original application are part of the disclosure, MPEP §§ 2163.03 and 2163.06(III), and claim 2 is enabled

by the original disclosure. (C) is incorrect. The original disclosure enables claim 2. (D) is incorrect because

although the specification should be objected to, the original disclosure enables each of the claims.

MPEP § 2163.06(I). (E) is incorrect because (B) is correct.