5 Written questions
5 Matching questions
- Trademarks or trade names
- Is a specific example required to fullfill the best mode requirement?
- How can one avoid a 35 USC 112, rejection?
- When does the doctrine of equivalents arise?
- Best Mode
- a The 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.
- b A specific example is not required to fulfill the requirement - a preferred range of conditions, for instance, may be adequate
- c 1) keep exemplary language (specific examples) and preferences out of the claim language and limit them to the specifications.
- d The doctrine of equivalents arises in the context of infringement action
- e - 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)].
5 Multiple choice questions
- 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
- The claims must particularly point out and distinctly define the metes and bounds of the subject matter that will be protected by the patent.
- "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 specification must describe to one skilled in the art how to make and use the invention as of the filing date.
- 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
What evidence is considered in determining the the adequacy of disclosure for compliance with the best mode requirement? → 1) Claim Terminology
2) Consistency with Specification or Prior Art
3) Breath of Scope
4) Lack of Antecedent Basis
5) Product and Process
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
3) best mode of carrying out invention
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 exceptions for numerical ranges that do not raise an issue of definiteness? → 1) if they are used in a limitation intended as a description of a material
2) their use cases confusion as to the scope of the claims
What should be done when an invention cannot be defined in words? → It is acceptable to incorporate tables and figures