5 Written Questions
5 Matching Questions
- Lack of Antecedent Basis
- How does one determine equivalence?
- What kind of claim to a process is usually held indefinite?
- Does disclosure of less than the best mode invalidate a parent?
- Is a specific example required to fullfill the best mode requirement?
- a 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.
- b 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.
- c 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.
- d 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.
- e A specific example is not required to fulfill the requirement - a preferred range of conditions, for instance, may be adequate
5 Multiple Choice Questions
- 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.
- 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
- 1) about
- The claims must particularly point out and distinctly define the metes and bounds of the subject matter that will be protected by the patent.
- 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.]
5 True/False Questions
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.
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)
Fails the Utility 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 are exceptions for numerical ranges that do not raise an issue of definiteness? → 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
What two factual inquiries are to be made in determining whether a specification satisfies the best mode requirement? → 1) Claim Terminology
2) Consistency with Specification or Prior Art
3) Breath of Scope
4) Lack of Antecedent Basis
5) Product and Process