5 Written questions
5 Matching questions
- 35 USC 112, 6th paragraph
- Means or Step Plus Function
- What should be done when an invention cannot be defined in words?
- How can one avoid a 35 USC 112, rejection?
- a It is acceptable to incorporate tables and figures
- b 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.
- c 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.
- d 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.
- e 1) keep exemplary language (specific examples) and preferences out of the claim language and limit them to the specifications.
5 Multiple choice questions
- 1) narrow and broader ranges in the same claim (e.g., a length between 5 and 16 inches, preferably between 7 and 8 inches)
2) open ended numerical ranges (e.g., at least 12%) which should be checked carefully for consistency with examples and guidelines in the rest of the disclosure.
- 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.
- Claims 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 §2173.03]
- - 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)].
- 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.
5 True/False questions
The following quotation is an example of what? → The doctrine of equivalents arises in the context of infringement action
How does one determine equivalence? → 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.
Lack of Antecedent Basis → 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.
What are the six terms that are scrutinized by the USPTO for their exact meaning relative to the invention? → 1) about
Aggregation → 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.