5 Written questions
5 Matching questions
- Is a specific example required to fullfill the best mode requirement?
- What should be done when an invention cannot be defined in words?
- What condition should claims be written in according to 112, 2nd paragraph?
- Can a failure to disclose the best mode in the original application be rectified by an amendment?
- What are the three requirements of section 112, first paragraph?
- a It is acceptable to incorporate tables and figures
- b claims should be as self-contained as possible and should not reference tables and figures unless necessary.
- c No, an amendment cannot rectify a failure to disclose
- d 1) written description of the invention
3) best mode of carrying out invention
- e A specific example is not required to fulfill the requirement - a preferred range of conditions, for instance, may be adequate
5 Multiple choice questions
- 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.
- 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
- 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.
- 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)
- 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
How can one avoid a 35 USC 112, rejection? → 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.
The following quotation is an example of what? → An indefinite claim based on lack of scope
Requires undue Experimentation → The 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.
Claim Terminology → 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.
35 USC 112, 6th paragraph → 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.