NAME

Question types


Start with


Question limit

of 48 available terms

Advertisement Upgrade to remove ads
Print test

5 Written questions

5 Matching questions

  1. Fails the Utility Requirement
  2. . Claims are Overly Broad
  3. What actions are not considered new matter?
  4. Enablement
  5. Best Mode
  1. a 1) Rewording
    2) Making inherent function explicit
    3) making explicit material incorporated by reference not new matter
  2. b 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.
  3. c 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.
  4. d If the specification clearly recites a feature of the invention that is critical to the invention performing its intended operation, and the feature is not recited in the claims, ("purposely" making the claims broader than the enabling disclosure) a rejection based on lack of enablement will be made.
  5. e The specification must describe to one skilled in the art how to make and use the invention as of the filing date.

5 Multiple choice questions

  1. 1) about
    2) essentially
    3) similar
    4) substantially
    5) type
    6) relatively
  2. 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.
  3. 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.
  4. 1) narrow and broader ranges in the same claim (e.g., a length between 5 and 16 inches, preferably between 7 and 8 inches)

    2) open ended numerical ranges (e.g., at least 12%) which should be checked carefully for consistency with examples and guidelines in the rest of the disclosure.
  5. 1) written description of the invention
    2) enablement
    3) best mode of carrying out invention

5 True/False questions

  1. Markush GroupsA 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.]

          

  2. What 5 categories will the USPTO consider to determine whether the claims do or do not meet the section 112, 2nd paragraph requirements?1) Claim Terminology
    2) Consistency with Specification or Prior Art
    3) Breath of Scope
    4) Lack of Antecedent Basis
    5) Product and Process

          

  3. Reliance on PriorityClaims 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.

          

  4. When does the doctrine of equivalents arise?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.

          

  5. 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.

          

Create Set