35 U.S.C. 112 paragraphs 1, 2 and 6

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35 USC 112, first paragraph
[MPEP 2161]

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full clear, concise, and exact terms so to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

What are the three requirements of section 112, first paragraph?

1) written description of the invention
2) enablement
3) best mode of carrying out invention

Written Description

Makes clear what the applicant invented and who actually created the invention. Description should clearly allow persons of ordinary skill in the art to recognize that he or she invented what is claimed.

Enablement

The specification must describe to one skilled in the art how to make and use the invention as of the filing date.

Best Mode

The best mode requirement is intended to ensure that the inventor does not disclose less than the most desirable form of his invention. The examiner should assume that the best mode is in fact disclosed, unless evidence arises to the contrary.

What evidence is considered in determining the the adequacy of disclosure for compliance with the best mode requirement?

only evidence of concealment is relevant. Concealment need not be intentional. For example, the quality of the applicant's best mode may be so poor as to effectively result in concealment.

What two factual inquiries are to be made in determining whether a specification satisfies the best mode requirement?

1) there must be a subjective determination as to whether at the time the application was filed, the inventor knew of a best mode of practicing the invention.
2) if the inventor had a best mode of practicing the invention in mind, there must be an objective determination as to whether that best mode was disclosed in sufficient detail to allow one skilled in the art to practice it.

No New Matter

"New matter" cannot be added by amendment to an applicant's disclosure after its filing [35 USC §§ 132, 251]. The issue of new matter will arise if the claims, specification or drawings of an application are amended and the content of the amendment is not described in the application (i.e. is new matter not already contained in the claims, specification or drawings).

What actions are not considered new matter?

1) Rewording
2) Making inherent function explicit
3) making explicit material incorporated by reference not new matter

Reliance on Filing Date of Patent

For claims to be entitled to the filing date of an earlier application, the description of their subject matter must meet §112, paragraph 1 requirements.

Reliance on Priority

Claims are entitled to the foreign priority date of filing date of a provisional application if the foreign or provisional application supports the claims as required by § 112, paragraph 1.

Changes to the Scope of the Claim

Broadening or narrowing the breadth of the claim limitations or altering a numerical range limitation after the application has been filed often results in failure to meet the written description requirement.

An application may face a section 112 paragraph 1 lack of enablement rejection if any of which three conditions are met?

A) Undue Experimentation by one skilled in the art
B) Claims are purposely broader than the enabling disclosure
C) If a claim is not useful or inoperative it necessarily fails to meet utility requirement (the specification cannot show how to use a useless invention)

Requires undue Experimentation

The test for adequate enablement (determined by the Supreme Court) has been a question of whether a person skilled in the art would have to conduct undue experimentation to make and use the invention. Often enablement will not be met because information (that could not be discovered without undue experimentation) is missing about critical parts of an invention, how to obtain those parts, or the relationship between them.

What four factors are among those to be used to determine whether necessary experimentation is "undue?"

1) The breadth of the claims;
2) The nature of the invention;
3) The state of the prior art; and
4) The level of one of ordinary skill

. Claims are Overly Broad

If the specification clearly recites a feature of the invention that is critical to the invention performing its intended operation, and the feature is not recited in the claims, ("purposely" making the claims broader than the enabling disclosure) a rejection based on lack of enablement will be made.

Fails the Utility Requirement

Relationship of enablement to the utility requirement: If a claim is not useful or inoperative (i.e., fails to meet the utility requirement) it necessarily fails to meet how-to-use requirement of enablement because the specification cannot show how to use a useless invention.

Does disclosure of less than the best mode invalidate a parent?

Disclosure of less than the best mode does not invalidate a parent as long as the inventor as the time of the application did not know of the better method or did not recognize its superiority.

Is a specific example required to fullfill the best mode requirement?

A specific example is not required to fulfill the requirement - a preferred range of conditions, for instance, may be adequate

Does the disclosure need to point out which of the embodiment is considered best?

No, as long as it is among those disclosed

Is there a need to update the believed best mode?

There is NO need to update if the priority or the filing date of a previous application is relied upon

Can a failure to disclose the best mode in the original application be rectified by an amendment?

No, an amendment cannot rectify a failure to disclose

35 USC 112, 2nd paragraph
"Definiteness Requirement"

The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention

What are the two requirements for 35 USC 112, 2nd paragraph?

1) The claims must set forth the subject matter the applicants regard as their inventions
2) The claims must particularly point out and distinctly define the metes and bounds of the subject matter that will be protected by the patent.

What is the definiteness requirement?

The claims must particularly point out and distinctly define the metes and bounds of the subject matter that will be protected by the patent.

What 5 categories will the USPTO consider to determine whether the claims do or do not meet the section 112, 2nd paragraph requirements?

1) Claim Terminology
2) Consistency with Specification or Prior Art
3) Breath of Scope
4) Lack of Antecedent Basis
5) Product and Process

Claim Terminology

Applicants can use whatever terms they chose for defining their invention in the claims, so long as those terms are not used in ways contrary to accepted meanings in the art. ("Oval" cannot be defined as trapezoidal.).
The use of relative terms in claims is a factual and subjective test, not an objective test.

What are the six terms that are scrutinized by the USPTO for their exact meaning relative to the invention?

1) about
2) essentially
3) similar
4) substantially
5) type
6) relatively

Trademarks or trade names

- Trademarks or trade names identify the source of goods, not the goods themselves. Trademarks can be used in the claim language [MPEP 608.01(v)].

When do claims that involve trademarks lead to indefiniteness?

1) if they are used in a limitation intended as a description of a material
2) their use cases confusion as to the scope of the claims

Markush Groups

A Markush group which is a way of limiting claim to the members of the group of individual elements (e.g., members "selected from the group consisting of A, B and C") is definite. [A Markush group is a way of limiting a group to a set of individual elements. A markush group is used when a genus can be defined as a group that consists of particular individuals. It's a special/alternate way of expression that selects from a group "consisting of A, B and C" (closed-ended transition phrase). This wording is used (for among other reasons) to identify elements with a common trait, and the exact language must be used.]

Omnibus claims

Omnibus claims which read "a device substantially as shown and describes" are indefinite. These claims are not allowed in the US because they do not express the metes and bounds of the claim.

What condition should claims be written in according to 112, 2nd paragraph?

claims should be as self-contained as possible and should not reference tables and figures unless necessary.

What should be done when an invention cannot be defined in words?

It is acceptable to incorporate tables and figures

Consistency with Specification or Prior Art

Claims that are inconsistent with their supporting specification or the prior art cannot be considered reasonably particular and distinct, even though the terms of the claims may seem definite. [MPEP §2173.03]

Breadth of Scope

The scope of the claims must be defined clearly under section 112, 2nd paragraph. (It is not the breadth of the scope, but whether that scope is clearly defined that matters to a sections 112, 1st paragraph issue.)

The following quotation is an example of what?

An indefinite claim based on lack of scope

What are exceptions for numerical ranges that do not raise an issue of definiteness?

1) narrow and broader ranges in the same claim (e.g., a length between 5 and 16 inches, preferably between 7 and 8 inches)

2) open ended numerical ranges (e.g., at least 12%) which should be checked carefully for consistency with examples and guidelines in the rest of the disclosure.

How can one avoid a 35 USC 112, rejection?

1) keep exemplary language (specific examples) and preferences out of the claim language and limit them to the specifications.

Lack of Antecedent Basis

References in a claim to, for example, "said lever" or "the lever" when there is no previous reference in the claim to a lever creates uncertainty as to what the claim is referring to. A lack of antecedent basis results in indefiniteness, unless the scope of the claim could be reasonably ascertained by a skilled artisan.

Product and Process

A product-by process claim is a product claim defining the product in terms of the process that makes it. Such a claim is not inherently indefinite. However, a product and process claim in which both an apparatus and the process for using it are claimed is indefinite.

What kind of claim to a process is usually held indefinite?

Claims to a process that do not include any steps to be taken in carrying out the process are usually held to be indefinite. For example, a claim to "a process for using X of claim 4 to isolate and purify Y" was found indefinite because it recites a use without giving steps for how the use is practiced.

35 USC 112, 6th paragraph

An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

Means or Step Plus Function

Although the use of the term "means" or "means for" is often a clear indication that the means or step for function rules apply, the actual determination is base coin whether the element in the claim is set forth, at least in part, by the function that it performs rather than the specific structure, material or acts that perform the function.

Aggregation

A claim should not be rejected on the ground of "aggregation. (an applicant is entitled to know whether the claims are being rejected under 35 U.S.C. 101, 102, 103, or 112.

Prolix

Examiners should reject claims as prolix only when they contain such long recitations or unimportant details that the scope of the claimed invention is rendered indefinite thereby. Also, when the metes and bounds cannot be determined.

When does the doctrine of equivalents arise?

The doctrine of equivalents arises in the context of infringement action

How does one determine equivalence?

1) Does the accused product or process contain elements identical or equivalent to each claimed element of the patented invention?
2) an analysis of the role played by each element in the context of the specific patent claim will thus inform the inquiry as to whether a substitute element matches the function, way, and result of the claimed element, or whether the substitute plays a role substantially different from the claimed element.

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