5 Written Questions
5 Matching Questions
- What four factors are among those to be used to determine whether necessary experimentation is "undue?"
- How can one avoid a 35 USC 112, rejection?
- 35 USC 112, first paragraph
- Omnibus claims
- Does the disclosure need to point out which of the embodiment is considered best?
- a 1) keep exemplary language (specific examples) and preferences out of the claim language and limit them to the specifications.
- b The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full clear, concise, and exact terms so to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
- c 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
- d No, as long as it is among those disclosed
- e Omnibus claims which read "a device substantially as shown and describes" are indefinite. These claims are not allowed in the US because they do not express the metes and bounds of the claim.
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.
- If 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.
- 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.
- A specific example is not required to fulfill the requirement - a preferred range of conditions, for instance, may be adequate
- 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.
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.
What actions are not considered new matter? → 1) Rewording
2) Making inherent function explicit
3) making explicit material incorporated by reference not new matter
Enablement → 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.
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
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.