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5 Written questions

5 Matching questions

  1. 35 USC 112, 6th paragraph
  2. What is the definiteness requirement?
  3. What kind of claim to a process is usually held indefinite?
  4. What actions are not considered new matter?
  5. What should be done when an invention cannot be defined in words?
  1. a 1) Rewording
    2) Making inherent function explicit
    3) making explicit material incorporated by reference not new matter
  2. b 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.
  3. c 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.
  4. d It is acceptable to incorporate tables and figures
  5. e 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 Multiple choice questions

  1. 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.
  2. 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.
  3. There is NO need to update if the priority or the filing date of a previous application is relied upon
  4. "New matter" cannot be added by amendment to an applicant's disclosure after its filing [35 USC ยงยง 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. 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.

5 True/False questions

  1. 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

          

  2. 35 USC 112, 2nd paragraph
    "Definiteness Requirement"
    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. 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.

          

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

          

  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