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5 Written questions

5 Matching questions

  1. Fails the Utility Requirement
  2. Claim Terminology
  3. Changes to the Scope of the Claim
  4. Breadth of Scope
  5. When does the doctrine of equivalents arise?
  1. a The doctrine of equivalents arises in the context of infringement action
  2. b 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.
  3. c The scope of the claims must be defined clearly under section 112, 2nd paragraph. (It is not the breadth of the scope, but whether that scope is clearly defined that matters to a sections 112, 1st paragraph issue.)
  4. d 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.
  5. e 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.

5 Multiple choice questions

  1. 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.
  2. A product-by process claim is a product claim defining the product in terms of the process that makes it. Such a claim is not inherently indefinite. However, a product and process claim in which both an apparatus and the process for using it are claimed is indefinite.
  3. "New matter" cannot be added by amendment to an applicant's disclosure after its filing [35 USC ยงยง 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).
  4. 1) about
    2) essentially
    3) similar
    4) substantially
    5) type
    6) relatively
  5. There is NO need to update if the priority or the filing date of a previous application is relied upon

5 True/False questions

  1. . Claims are Overly BroadApplicants 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.

          

  2. EnablementThe 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. 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

          

  4. Does the disclosure need to point out which of the embodiment is considered best?No, as long as it is among those disclosed

          

  5. When do claims that involve trademarks lead to indefiniteness?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.

          

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