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5 Written questions

5 Matching questions

  1. Written Description
  2. What are the two requirements for 35 USC 112, 2nd paragraph?
  3. Markush Groups
  4. What actions are not considered new matter?
  5. Requires undue Experimentation
  1. a Makes clear what the applicant invented and who actually created the invention. Description should clearly allow persons of ordinary skill in the art to recognize that he or she invented what is claimed.
  2. b 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.
  3. c 1) Rewording
    2) Making inherent function explicit
    3) making explicit material incorporated by reference not new matter
  4. d 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. e A Markush group which is a way of limiting claim to the members of the group of individual elements (e.g., members "selected from the group consisting of A, B and C") is definite. [A Markush group is a way of limiting a group to a set of individual elements. A markush group is used when a genus can be defined as a group that consists of particular individuals. It's a special/alternate way of expression that selects from a group "consisting of A, B and C" (closed-ended transition phrase). This wording is used (for among other reasons) to identify elements with a common trait, and the exact language must be used.]

5 Multiple choice questions

  1. If the specification clearly recites a feature of the invention that is critical to the invention performing its intended operation, and the feature is not recited in the claims, ("purposely" making the claims broader than the enabling disclosure) a rejection based on lack of enablement will be made.
  2. 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.
  3. Relationship of enablement to the utility requirement: If a claim is not useful or inoperative (i.e., fails to meet the utility requirement) it necessarily fails to meet how-to-use requirement of enablement because the specification cannot show how to use a useless invention.
  4. The specification must describe to one skilled in the art how to make and use the invention as of the filing date.
  5. A claim should not be rejected on the ground of "aggregation. (an applicant is entitled to know whether the claims are being rejected under 35 U.S.C. 101, 102, 103, or 112.

5 True/False questions

  1. Consistency with Specification or Prior ArtFor claims to be entitled to the filing date of an earlier application, the description of their subject matter must meet §112, paragraph 1 requirements.

          

  2. What two factual inquiries are to be made in determining whether a specification satisfies the best mode requirement?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

          

  3. Reliance on Filing Date of PatentClaims are entitled to the foreign priority date of filing date of a provisional application if the foreign or provisional application supports the claims as required by § 112, paragraph 1.

          

  4. Trademarks or trade namesA Markush group which is a way of limiting claim to the members of the group of individual elements (e.g., members "selected from the group consisting of A, B and C") is definite. [A Markush group is a way of limiting a group to a set of individual elements. A markush group is used when a genus can be defined as a group that consists of particular individuals. It's a special/alternate way of expression that selects from a group "consisting of A, B and C" (closed-ended transition phrase). This wording is used (for among other reasons) to identify elements with a common trait, and the exact language must be used.]

          

  5. Best ModeThe best mode requirement is intended to ensure that the inventor does not disclose less than the most desirable form of his invention. The examiner should assume that the best mode is in fact disclosed, unless evidence arises to the contrary.