5 Written questions
5 Matching questions
- Does the disclosure need to point out which of the embodiment is considered best?
- Fails the Utility Requirement
- What are the six terms that are scrutinized by the USPTO for their exact meaning relative to the invention?
- Claim Terminology
- a 1) about
- b The specification must describe to one skilled in the art how to make and use the invention as of the filing date.
- c No, as long as it is among those disclosed
- d 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.
- e 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.
5 Multiple choice questions
- Omnibus claims which read "a device substantially as shown and describes" are indefinite. These claims are not allowed in the US because they do not express the metes and bounds of the claim.
- An indefinite claim based on lack of scope
- 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.
- A) Undue Experimentation by one skilled in the art
B) Claims are purposely broader than the enabling disclosure
C) If a claim is not useful or inoperative it necessarily fails to meet utility requirement (the specification cannot show how to use a useless invention)
- The doctrine of equivalents arises in the context of infringement action
5 True/False questions
Product and Process → 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.
Changes to the Scope of the Claim → 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.
Does disclosure of less than the best mode invalidate a parent? → Disclosure of less than the best mode does not invalidate a parent as long as the inventor as the time of the application did not know of the better method or did not recognize its superiority.
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.
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