5 Written Questions
5 Matching Questions
- The following quotation is an example of what?
- No New Matter
- Means or Step Plus Function
- Does the disclosure need to point out which of the embodiment is considered best?
- An application may face a section 112 paragraph 1 lack of enablement rejection if any of which three conditions are met?
- a "New matter" cannot be added by amendment to an applicant's disclosure after its filing [35 USC §§ 132, 251]. The issue of new matter will arise if the claims, specification or drawings of an application are amended and the content of the amendment is not described in the application (i.e. is new matter not already contained in the claims, specification or drawings).
- b No, as long as it is among those disclosed
- c 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.
- d 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)
- e An indefinite claim based on lack of scope
5 Multiple Choice Questions
- 1) keep exemplary language (specific examples) and preferences out of the claim language and limit them to the specifications.
- 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.
- 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.
- 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.
- 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.
5 True/False Questions
Consistency with Specification or Prior Art → Makes clear what the applicant invented and who actually created the invention. Description should clearly allow persons of ordinary skill in the art to recognize that he or she invented what is claimed.
What are the six terms that are scrutinized by the USPTO for their exact meaning relative to the invention? → 1) about
35 USC 112, 2nd paragraph
"Definiteness Requirement" → 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.
. Claims are Overly Broad → 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.
What two factual inquiries are to be made in determining whether a specification satisfies the best mode requirement? → 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.