5 Written questions
5 Matching questions
- What evidence is considered in determining the the adequacy of disclosure for compliance with the best mode requirement?
- Best Mode
- What 5 categories will the USPTO consider to determine whether the claims do or do not meet the section 112, 2nd paragraph requirements?
- Consistency with Specification or Prior Art
- a only evidence of concealment is relevant. Concealment need not be intentional. For example, the quality of the applicant's best mode may be so poor as to effectively result in concealment.
- b 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]
- c 1) Claim Terminology
2) Consistency with Specification or Prior Art
3) Breath of Scope
4) Lack of Antecedent Basis
5) Product and Process
- d 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.
- e 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 Multiple choice questions
- 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.
- - 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)].
- Broadening or narrowing the breadth of the claim limitations or altering a numerical range limitation after the application has been filed often results in failure to meet the written description requirement.
- 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.
- No, as long as it is among those disclosed
5 True/False questions
What should be done when an invention cannot be defined in words? → It is acceptable to incorporate tables and figures
What four factors are among those to be used to determine whether necessary experimentation is "undue?" → 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
When does the doctrine of equivalents arise? → The doctrine of equivalents arises in the context of infringement action
The following quotation is an example of what? → For claims to be entitled to the filing date of an earlier application, the description of their subject matter must meet §112, paragraph 1 requirements.
Reliance on Filing Date of Patent → Claims 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.