5 Written Questions
5 Matching Questions
- Trademarks or trade names
- Reliance on Filing Date of Patent
- What are the two requirements for 35 USC 112, 2nd paragraph?
- Product and Process
- Requires undue Experimentation
- a - 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)].
- b 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.
- c 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.
- d 1) The claims must set forth the subject matter the applicants regard as their inventions
2) The claims must particularly point out and distinctly define the metes and bounds of the subject matter that will be protected by the patent.
- e 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 Multiple Choice Questions
- A specific example is not required to fulfill the requirement - a preferred range of conditions, for instance, may be adequate
- It is acceptable to incorporate tables and figures
- An indefinite claim based on lack of scope
- The claims must particularly point out and distinctly define the metes and bounds of the subject matter that will be protected by the patent.
- Claims that are inconsistent with their supporting specification or the prior art cannot be considered reasonably particular and distinct, even though the terms of the claims may seem definite. [MPEP §2173.03]
5 True/False Questions
Lack of Antecedent Basis → 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.
Aggregation → 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.
How does one determine equivalence? → 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.
Changes to the Scope of the Claim → Broadening or narrowing the breadth of the claim limitations or altering a numerical range limitation after the application has been filed often results in failure to meet the written description requirement.
Reliance on Priority → 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.