NAME: ________________________

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5 Written Questions

5 Matching Questions

  1. Aggregation
  2. Markush Groups
  3. The following quotation is an example of what?
  4. . Claims are Overly Broad
  5. What are the two requirements for 35 USC 112, 2nd paragraph?
  1. a 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.
  2. b 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.
  3. c 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.
  4. d 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.]
  5. e An indefinite claim based on lack of scope

5 Multiple Choice Questions

  1. 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.
  2. 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.
  3. A specific example is not required to fulfill the requirement - a preferred range of conditions, for instance, may be adequate
  4. An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
  5. The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention

5 True/False Questions

  1. Trademarks or trade names- 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)].

          

  2. Omnibus claimsA 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.]

          

  3. EnablementThe specification must describe to one skilled in the art how to make and use the invention as of the filing date.

          

  4. What should be done when an invention cannot be defined in words?1) Rewording
    2) Making inherent function explicit
    3) making explicit material incorporated by reference not new matter

          

  5. Consistency with Specification or Prior ArtClaims 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]

          

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