5 Written questions
5 Matching questions
- What four factors are among those to be used to determine whether necessary experimentation is "undue?"
- 35 USC 112, 2nd paragraph
- When does the doctrine of equivalents arise?
- How does one determine equivalence?
- a The doctrine of equivalents arises in the context of infringement action
- b The specification must describe to one skilled in the art how to make and use the invention as of the filing date.
- c 1) Does the accused product or process contain elements identical or equivalent to each claimed element of the patented invention?
2) an analysis of the role played by each element in the context of the specific patent claim will thus inform the inquiry as to whether a substitute element matches the function, way, and result of the claimed element, or whether the substitute plays a role substantially different from the claimed element.
- d 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
- e 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
5 Multiple choice questions
- 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.
- 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.
- No, an amendment cannot rectify a failure to disclose
- 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.
- 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.
5 True/False questions
What is the definiteness requirement? → 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.
What kind of claim to a process is usually held indefinite? → 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
No New Matter → "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).
What two factual inquiries are to be made in determining whether a specification satisfies the best mode requirement? → 1) there must be a subjective determination as to whether at the time the application was filed, the inventor knew of a best mode of practicing the invention.
2) if the inventor had a best mode of practicing the invention in mind, there must be an objective determination as to whether that best mode was disclosed in sufficient detail to allow one skilled in the art to practice it.
Lack of Antecedent Basis → 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.