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5 Written questions

5 Matching questions

  1. Is there a need to update the believed best mode?
  2. What are the three requirements of section 112, first paragraph?
  3. When do claims that involve trademarks lead to indefiniteness?
  4. What 5 categories will the USPTO consider to determine whether the claims do or do not meet the section 112, 2nd paragraph requirements?
  5. What condition should claims be written in according to 112, 2nd paragraph?
  1. a There is NO need to update if the priority or the filing date of a previous application is relied upon
  2. b 1) Claim Terminology
    2) Consistency with Specification or Prior Art
    3) Breath of Scope
    4) Lack of Antecedent Basis
    5) Product and Process
  3. c claims should be as self-contained as possible and should not reference tables and figures unless necessary.
  4. d 1) written description of the invention
    2) enablement
    3) best mode of carrying out invention
  5. e 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 Multiple choice questions

  1. An indefinite claim based on lack of scope
  2. 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.
  3. - 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)].
  4. 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.
  5. 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)

5 True/False questions

  1. . Claims are Overly BroadIf 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.


  2. 35 USC 112, first paragraph
    [MPEP 2161]
    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.


  3. Breadth of ScopeThe 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.)


  4. Written DescriptionMakes 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.


  5. What are the two requirements for 35 USC 112, 2nd paragraph?1) written description of the invention
    2) enablement
    3) best mode of carrying out invention


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