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5 Written questions

5 Matching questions

  1. When do claims that involve trademarks lead to indefiniteness?
  2. What evidence is considered in determining the the adequacy of disclosure for compliance with the best mode requirement?
  3. Reliance on Priority
  4. Trademarks or trade names
  5. Written Description
  1. a 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
  2. b 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.
  3. c 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.
  4. d - 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)].
  5. e 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 Multiple choice questions

  1. 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.
  2. 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.
  3. For claims to be entitled to the filing date of an earlier application, the description of their subject matter must meet §112, paragraph 1 requirements.
  4. The test for adequate enablement (determined by the Supreme Court) has been a question of whether a person skilled in the art would have to conduct undue experimentation to make and use the invention. Often enablement will not be met because information (that could not be discovered without undue experimentation) is missing about critical parts of an invention, how to obtain those parts, or the relationship between them.
  5. 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

  1. What four factors are among those to be used to determine whether necessary experimentation is "undue?"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.

          

  2. What is the definiteness 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.

          

  3. 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.

          

  4. No New Matter"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).

          

  5. An application may face a section 112 paragraph 1 lack of enablement rejection if any of which three conditions are met?1) keep exemplary language (specific examples) and preferences out of the claim language and limit them to the specifications.

          

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