5 Written questions
5 Matching questions
- What are the six terms that are scrutinized by the USPTO for their exact meaning relative to the invention?
- What are the three requirements of section 112, first paragraph?
- Is a specific example required to fullfill the best mode requirement?
- 35 USC 112, first paragraph
- 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.
- b 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.
- c A specific example is not required to fulfill the requirement - a preferred range of conditions, for instance, may be adequate
- d 1) written description of the invention
3) best mode of carrying out invention
- e 1) about
5 Multiple choice questions
- - 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)].
- 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
- 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.
- 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)
- There is NO need to update if the priority or the filing date of a previous application is relied upon
5 True/False questions
What two factual inquiries are to be made in determining whether a specification satisfies the best mode requirement? → 1) Claim Terminology
2) Consistency with Specification or Prior Art
3) Breath of Scope
4) Lack of Antecedent Basis
5) Product and Process
Reliance on Filing Date of Patent → 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.
What kind of claim to a process is usually held indefinite? → 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
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.
Best Mode → 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.