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5 Written questions

5 Matching questions

  1. Means or Step Plus Function
  2. Is a specific example required to fullfill the best mode requirement?
  3. Prolix
  4. What four factors are among those to be used to determine whether necessary experimentation is "undue?"
  5. An application may face a section 112 paragraph 1 lack of enablement rejection if any of which three conditions are met?
  1. a 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.
  2. b 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. c A specific example is not required to fulfill the requirement - a preferred range of conditions, for instance, may be adequate
  4. d 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
  5. e 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 Multiple choice questions

  1. The specification must describe to one skilled in the art how to make and use the invention as of the filing date.
  2. A product-by process claim is a product claim defining the product in terms of the process that makes it. Such a claim is not inherently indefinite. However, a product and process claim in which both an apparatus and the process for using it are claimed is indefinite.
  3. 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.]
  4. 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.
  5. 1) written description of the invention
    2) enablement
    3) best mode of carrying out invention

5 True/False questions

  1. AggregationA claim should not be rejected on the ground of "aggregation. (an applicant is entitled to know whether the claims are being rejected under 35 U.S.C. 101, 102, 103, or 112.


  2. Best ModeThe 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.


  3. Claim TerminologyApplicants 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.


  4. The following quotation is an example of what?An indefinite claim based on lack of scope


  5. 35 USC 112, first paragraph
    [MPEP 2161]
    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.


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