5 Written questions
5 Matching questions
- Can a failure to disclose the best mode in the original application be rectified by an amendment?
- What kind of claim to a process is usually held indefinite?
- The following quotation is an example of what?
- What should be done when an invention cannot be defined in words?
- a No, an amendment cannot rectify a failure to disclose
- b 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.
- c It is acceptable to incorporate tables and figures
- d 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.
- e An indefinite claim based on lack of scope
5 Multiple choice questions
- 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.
- 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.
- The claims must particularly point out and distinctly define the metes and bounds of the subject matter that will be protected by the patent.
- 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.)
- 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.
5 True/False questions
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
Requires undue Experimentation → 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.
What 5 categories will the USPTO consider to determine whether the claims do or do not meet the section 112, 2nd paragraph requirements? → 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.
. Claims are Overly Broad → 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 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.