5 Written questions
5 Matching questions
- What is the definiteness requirement?
- What are the six terms that are scrutinized by the USPTO for their exact meaning relative to the invention?
- The following quotation is an example of what?
- What kind of claim to a process is usually held indefinite?
- Claim Terminology
- a Claims to a process that do not include any steps to be taken in carrying out the process are usually held to be indefinite. For example, a claim to "a process for using X of claim 4 to isolate and purify Y" was found indefinite because it recites a use without giving steps for how the use is practiced.
- b 1) about
- c Applicants 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.
- d An indefinite claim based on lack of scope
- e The claims must particularly point out and distinctly define the metes and bounds of the subject matter that will be protected by the patent.
5 Multiple choice questions
- 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.
- A 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.
- claims should be as self-contained as possible and should not reference tables and figures unless necessary.
- 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.
- 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
Written Description → A 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.
Means or Step Plus Function → 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.
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.
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.
No New Matter → 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.