Baldwin seeks to add to its application claims 51-55 and to designate those claims as
corresponding to the count. Baldwin claims 51-55 directly or indirectly depend on claim 30.
Baldwin argues that claims 51-55 are introduced to more clearly define the construction of the
pouch of claim 30 so as to characterize the size of the pouch interior in the context of the food
articles intended to be transported by the food heating device of claim 30.
As the movant, Baldwin must demonstrate that the claims define the same patentable
invention as the count. 37 CFR § 1.637(c)(2)(ii). Baldwin must show the patentability of each
claim, apply the terms of the claim proposed to be added to the disclosure of Baldwin’s
application, and file with the motion a proposed amendment adding the claims to the application.
37 CFR § 1.637(c)(2)(iii). Baldwin must also file a separate paper containing an annotated copy
of the new claim(s). Paper 1, Standing Order § 21.
Baldwin did not file an amendment adding the claims to the application, nor did Baldwin
file a copy of annotated claims 51-55. Baldwin has failed to demonstrate that its proposed
claims define the same patentable invention as the count. Instead, Baldwin argues in a
conclusory fashion that its proposed claims 51-55 cover the same patentable invention as
Frohlich’s involved claims 16-20, 23-29, 31 and 32, and “are directed at a ‘food heating device’”
(motion at 3). Baldwin further argues that Frohlich’s involved patent describes a container used
to receive and/or transport food.
Baldwin’s argument that Frohlich’s specification discusses the general features of the
proposed claims misses the mark. Baldwin must demonstrate that the proposed claims are
directed to the same patentable invention as the count. This is done through a detailed
anticipation or obviousness analysis. In that analysis, an opponents specification is not prior art
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