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5 Written questions

5 Matching questions

  1. No New Matter
  2. When do claims that involve trademarks lead to indefiniteness?
  3. How can one avoid a 35 USC 112, rejection?
  4. Breadth of Scope
  5. How does one determine equivalence?
  1. a 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.
  2. b 1) keep exemplary language (specific examples) and preferences out of the claim language and limit them to the specifications.
  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 "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).
  5. e 1) if they are used in a limitation intended as a description of a material
    2) their use cases confusion as to the scope of the claims

5 Multiple choice questions

  1. No, as long as it is among those disclosed
  2. 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.
  3. For claims to be entitled to the filing date of an earlier application, the description of their subject matter must meet §112, paragraph 1 requirements.
  4. 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.
  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. Lack of Antecedent BasisReferences 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.


  2. Requires undue ExperimentationThe test for adequate enablement (determined by the Supreme Court) has been a question of whether a person skilled in the art would have to conduct undue experimentation to make and use the invention. Often enablement will not be met because information (that could not be discovered without undue experimentation) is missing about critical parts of an invention, how to obtain those parts, or the relationship between them.


  3. Is a specific example required to fullfill the best mode requirement?A specific example is not required to fulfill the requirement - a preferred range of conditions, for instance, may be adequate


  4. When does the doctrine of equivalents arise?The doctrine of equivalents arises in the context of infringement action


  5. Markush GroupsOmnibus 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.