5 Written questions
5 Matching questions
- What are exceptions for numerical ranges that do not raise an issue of definiteness?
- Fails the Utility Requirement
- Does the disclosure need to point out which of the embodiment is considered best?
- No New Matter
- Breadth of Scope
- a 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.)
- b "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).
- c No, as long as it is among those disclosed
- d 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.
- e 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.
5 Multiple choice questions
- 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.
- 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.
- 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.
- 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]
- 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
5 True/False questions
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.
What actions are not considered new matter? → 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 are the three requirements of section 112, first 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.
Prolix → 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.
Enablement → The specification must describe to one skilled in the art how to make and use the invention as of the filing date.