5 Written questions
5 Matching questions
- What are the three requirements of section 112, first paragraph?
- What are the six terms that are scrutinized by the USPTO for their exact meaning relative to the invention?
- Is a specific example required to fullfill the best mode requirement?
- Breadth of Scope
- a A specific example is not required to fulfill the requirement - a preferred range of conditions, for instance, may be adequate
- b 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.
- c 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.)
- d 1) about
- e 1) written description of the invention
3) best mode of carrying out invention
5 Multiple choice questions
- "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).
- 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.
- 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.
- 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.
- 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]
5 True/False questions
Reliance on Filing Date of Patent → 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.
When does the doctrine of equivalents arise? → The doctrine of equivalents arises in the context of infringement action
Does disclosure of less than the best mode invalidate a parent? → There is NO need to update if the priority or the filing date of a previous application is relied upon
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
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.