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5 Written questions

5 Matching questions

  1. What actions are not considered new matter?
  2. What are the three requirements of section 112, first paragraph?
  3. What condition should claims be written in according to 112, 2nd paragraph?
  4. How can one avoid a 35 USC 112, rejection?
  5. Best Mode
  1. a 1) written description of the invention
    2) enablement
    3) best mode of carrying out invention
  2. b 1) Rewording
    2) Making inherent function explicit
    3) making explicit material incorporated by reference not new matter
  3. c 1) keep exemplary language (specific examples) and preferences out of the claim language and limit them to the specifications.
  4. d claims should be as self-contained as possible and should not reference tables and figures unless necessary.
  5. e 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.

5 Multiple choice questions

  1. 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.
  2. 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
  3. 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.
  4. 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.
  5. 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.

5 True/False questions

  1. Is there a need to update the believed best mode?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. What is the definiteness requirement?The claims must particularly point out and distinctly define the metes and bounds of the subject matter that will be protected by the patent.


  3. What four factors are among those to be used to determine whether necessary experimentation is "undue?"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


  4. 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 ยง2173.03]


  5. What are the six terms that are scrutinized by the USPTO for their exact meaning relative to the invention?1) written description of the invention
    2) enablement
    3) best mode of carrying out invention