Under the recently revised continuation rules, patent applicants may submit more than five independent claims or twenty-five total claims in an application, only if the applicant files an “Examination Support Document” (ESD) before to the first Office Action.
The USPTO has now released the guidelines for the ESD, which outlines the five substantive requirements of the EDS as follows:
1. Preexamination Search Statement: a statement that a preexamination search in compliance with 37 C.F.R. § 1.265(b) was conducted, including an identification of the field of search by United States class and subclass and the date of the search, where applicable, and, for database searches, the search logic or chemical structure or sequence used as a query, the name of the file or files searched and the database service, and the date of the search;
- The search must be encompass all of the limitations of each claim.
- Applicants are encouraged to use the USPTO’s search templates.
- The Office may consider a search insufficient if it determines that a number of references found in the areas where the applicant has searched are more closely related to the subject matter of the claims than those references cited by the applicant.
2. Listing of References Deemed Most Closely Related: a listing of the reference or references deemed most closely related to the subject matter of each of the claims (whether in independent or dependent form) in compliance with 37 C.F.R. § 1.265(c);
- The references that would be most closely related to the subject matter of the claims include: (1) a reference that discloses the most number of limitations in an independent claim; (2) a reference that discloses a limitation of an independent claim that is not shown in any other reference in the listing of references; and (3) a reference that discloses a limitation of a dependent claim that is not shown in any other reference in the listing of references.
3. Identification of Claim Limitations Disclosed by References: for each reference cited, an identification of all the limitations of each of the claims (whether in independent or dependent form) that are disclosed by the reference;
- Applicants may satisfy this requirement by mapping the limitations of each of the claims to the references (i.e., for each claim indicate where the cited references disclose features, showings, or teachings that are relevant to each limitation of such claim).
- A small entity may claim an exemption from the requirement.
4. Detailed Explanation of Patentability: a detailed explanation particularly pointing out how each of the independent claims is patentable over the cited references; and/p>
- The EDS must set out, by reference to one or more specific claim limitations, why the claimed subject matter is not described in the references, taken as a whole.
- The applicant must explain why a person of ordinary skill in the art would not have combined the features disclosed in one reference with the features disclosed in another reference to arrive at the claimed subject matter.
- The applicant must also explain why the claim limitations of the independent claims render the claimed subject matter novel and non-obvious over the cited prior art.
5. Showing of Support under 35 U.S.C. § 112, ¶ 1: a showing of where each limitation of each of the claims (whether in independent or dependent form) finds support under the first paragraph of 35 U.S.C. § 112 in the written description of the specification. If the application claims the benefit of one or more applications under title 35, United States Code, the showing must also include where each limitation of each of the claims finds support under the first paragraph of 35 U.S.C. § 112 in each such priority or benefit application in which such support exists.
- Means- (or step-) plus-function claim elements must be identified as such. In addition, the structure, material, or acts in the specification that correspond to each means- (or step-) plus-function claim element must be identified.