5 Written questions
5 Matching questions
- What are the six terms that are scrutinized by the USPTO for their exact meaning relative to the invention?
- 35 USC 112, first paragraph
- What evidence is considered in determining the the adequacy of disclosure for compliance with the best mode requirement?
- How can one avoid a 35 USC 112, rejection?
- Requires undue Experimentation
- a 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.
- b 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.
- c 1) about
- d 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.
- e 1) keep exemplary language (specific examples) and preferences out of the claim language and limit them to the specifications.
5 Multiple choice questions
- 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.
- 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
- - Trademarks or trade names identify the source of goods, not the goods themselves. Trademarks can be used in the claim language [MPEP 608.01(v)].
- There is NO need to update if the priority or the filing date of a previous application is relied upon
- A specific example is not required to fulfill the requirement - a preferred range of conditions, for instance, may be adequate
5 True/False questions
What condition should claims be written in according to 112, 2nd paragraph? → claims should be as self-contained as possible and should not reference tables and figures unless necessary.
No New Matter → "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).
The following quotation is an example of what? → 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.
Breadth of Scope → 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.)
What are the three requirements of section 112, first paragraph? → 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.