5 Written questions
5 Matching questions
- Is there a need to update the believed best mode?
- What actions are not considered new matter?
- What are the six terms that are scrutinized by the USPTO for their exact meaning relative to the invention?
- What 5 categories will the USPTO consider to determine whether the claims do or do not meet the section 112, 2nd paragraph requirements?
- 35 USC 112, first paragraph
- a 1) about
- b 1) Claim Terminology
2) Consistency with Specification or Prior Art
3) Breath of Scope
4) Lack of Antecedent Basis
5) Product and Process
- c The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full clear, concise, and exact terms so to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
- d There is NO need to update if the priority or the filing date of a previous application is relied upon
- e 1) Rewording
2) Making inherent function explicit
3) making explicit material incorporated by reference not new matter
5 Multiple choice questions
- The doctrine of equivalents arises in the context of infringement action
- 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.
- The claims must particularly point out and distinctly define the metes and bounds of the subject matter that will be protected by the patent.
- claims should be as self-contained as possible and should not reference tables and figures unless necessary.
- References in a claim to, for example, "said lever" or "the lever" when there is no previous reference in the claim to a lever creates uncertainty as to what the claim is referring to. A lack of antecedent basis results in indefiniteness, unless the scope of the claim could be reasonably ascertained by a skilled artisan.
5 True/False questions
No New Matter → The specification must describe to one skilled in the art how to make and use the invention as of the filing date.
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.
Prolix → 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.
Trademarks or trade names → - 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)].
Product and Process → 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.