5 Written Questions
5 Matching Questions
- 35 USC 112, first paragraph
- An application may face a section 112 paragraph 1 lack of enablement rejection if any of which three conditions are met?
- What four factors are among those to be used to determine whether necessary experimentation is "undue?"
- What evidence is considered in determining the the adequacy of disclosure for compliance with the best mode requirement?
- a 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)
- b The specification must describe to one skilled in the art how to make and use the invention as of the filing date.
- c 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.
- 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
- e 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.
5 Multiple Choice Questions
- 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.
- 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
- 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.
- The 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.)
- The doctrine of equivalents arises in the context of infringement action
5 True/False Questions
35 USC 112, 6th paragraph → 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.
Omnibus claims → 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.]
Fails the Utility 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.
Reliance on Priority → 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.
Markush Groups → 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.