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review session Flashcards

1
Q

IMPROPER CPA TREATED AS RCE

A

MPEP § 706.07(h)

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2
Q

types of apps

A

201

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3
Q

Claiming the Benefit of an Earlier Filing Date Under 35 U.S.C. 120 and 119(e)

A

211

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4
Q

Correcting or Adding a Benefit Claim After Filing

A

211.01a

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5
Q

Right of Priority of Foreign Application

A

213

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6
Q

Assignment of Division, Continuation, Substitute, and Continuation-in-Part in Relation to Parent Application

A

306
In the case of a division or continuation application, a prior assignment recorded against the original application is applied (effective) to the division or continuation application because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications

In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application

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7
Q

Assignment of an Application Claiming the Benefits of a Provisional Application

A

306.01
If an application which claims the benefit of the earlier filing date of a provisional application under 35 U.S.C. 119(e) includes only subject matter which formed a part of the provisional application, an assignment recorded against the provisional application will be effective in the later application, similar to the practice with respect to continuations and divisions

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8
Q

Accessibility of Assignment Records

Any request by a member of the public seeking copies of any assignment records of any pending or abandoned patent application preserved in confidence under § 1.14, or any information with respect thereto, must:

A

301.01
Any request by a member of the public seeking copies of any assignment records of any pending or abandoned patent application preserved in confidence under § 1.14, or any information with respect thereto, must:
(1) Be in the form of a petition including the fee set forth in § 1.17(g); or
(2) Include written authority granting access to the member of the public to the particular assignment records from an inventor, the applicant, the assignee or an assignee of an undivided part interest, or a patent practitioner of record.

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9
Q

restoration of the right of priority under 35 U.S.C. 119(a) through (d)

A

213.03

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10
Q

Requirement to File Priority Claim and Certified Copy During Pendency of Application

A

213.04

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11
Q

Attorney or Agent Withdraws

A

402.06

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12
Q

REFUNDS BASED ON LATER ESTABLISHMENT OF SMALL ENTITY STATUS

A

509.03 Claiming Small Entity Status
IX. REFUNDS BASED ON LATER ESTABLISHMENT OF SMALL ENTITY STATUS

a three-month time period for requesting a refund of a portion of a non-small entity fee based on later establishment of small entity status. The start date of the three-month refund period of 37 CFR 1.28(a) is the date the full fee has been paid.

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13
Q

(E) Establishing common ownership or establishing evidence of a Joint Research Agreement to overcome a 35 U.S.C. 102(a)(2) rejection or a 35 U.S.C. 103 rejection based on prior art under 35 U.S.C. 102(a)(2) by establishing entitlement to the 35 U.S.C. 102(b)(2)(C) exception.

A

706.02b1E

See MPEP §§ 717.02 and 2154.02(c).

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14
Q

Final Rejection, When Proper on Second Action

A

706.07(a)

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15
Q

Request for Continued Examination (RCE) Practice

A

706.07(h)
If prosecution in an application is closed, an applicant may request continued examination of the application by filing a submission and the fee set forth in § 1.17(e) prior to the earliest of:
(1) Payment of the issue fee, unless a petition under § 1.313 is granted;
(2) Abandonment of the application; or
(3) The filing of a notice of appeal to the U.S. Court of Appeals for the Federal Circuit under 35 U.S.C. 141, or the commencement of a civil action under 35 U.S.C. 145 or 146, unless the appeal or civil action is terminated.

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16
Q

whats a submission under RCE

A

706.07(h)

submission requirement

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17
Q

what app can’t use RCE

A

706.07(h)

conditions for filing an RCE

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18
Q

amendments, applicant’s action

A

714

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19
Q

signature to amendments

A

714.01

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20
Q

amendments not in permanent ink

A

714

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21
Q

Claims Added in Excess of Claims Previously Paid For

A

714.10
“amendments, applicant’s action”
pay before consideration of new claims

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22
Q

Affidavits or Declarations Traversing Rejections, 37 CFR 1.132

A

716-

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23
Q

Inventor’s Oath or Declaration

A

602.01

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24
Q

Correction of Inventorship, Name of Inventor, and Order of Names in an Application

A

602.01(c)

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25
Q

Correction of Inventorship By Reissue

A

1412.04

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26
Q

LIVING SUBJECT MATTER MAY BE PATENTABLE

A

2105

27
Q

Guidelines for Examination of Applications for Compliance with the Utility Requirement

A

2107

28
Q

MATERIAL OR ARTICLE WORKED UPON DOES NOT LIMIT APPARATUS CLAIMS

the manner or method in which such machine is to be utilized is not germane to the issue of patentability of the machine itself.

A

2115

29
Q

Anticipation — Application of 35 U.S.C. 102

A

2131-

30
Q

Multiple Reference 35 U.S.C. 102 Rejections

when proper

A

2131.01
Normally, only one reference should be used in making a rejection under 35 U.S.C. 102. However, a 35 U.S.C. 102 rejection over multiple references has been held to be proper when the extra references are cited to:

(A) Prove the primary reference contains an “enabled disclosure;”
(B) Explain the meaning of a term used in the primary reference; or
(C) Show that a characteristic not disclosed in the reference is inherent.

31
Q

Genus-Species anticipation

A

2131.02

32
Q

Anticipation of Ranges

A

2131.03

33
Q

interference 102g explanation

A

2138

  1. 01-Interference Practice
  2. 02-“The Invention Was Made in This Country”
  3. 03-“By Another Who Has Not Abandoned, Suppressed, or Concealed It”
  4. 04-“Conception”
  5. 05-“Reduction to Practice”
  6. 06-“Reasonable Diligence”
34
Q

Examination Guidelines for Determining Obviousness Under 35 U.S.C. 103

A

2141

35
Q

Examples of Basic Requirements of a Prima Facie Case of Obviousness

A

2143

36
Q

Exemplary rationales that may support a conclusion of obviousness include:

A

2143

37
Q

prima facie cause of obviousness: Suggestion or Motivation To Modify the References, Reasonable Expectation of Success Is Required, All Claim Limitations Must Be Considered

A
  1. 01
  2. 02
  3. 03
38
Q

Three Separate Requirements for Specification Under 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, First Paragraph

A

2161
the specification include the following:

(A) A written description of the invention;
(B) The manner and process of making and using the invention (the enablement requirement); and
(C) The best mode contemplated by the inventor of carrying out his invention.

39
Q

Computer Programming and 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, First Paragraph

A

2161 Three Separate Requirements for Specification Under 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, First Paragraph
2161.01

40
Q

test of enablement

A

2164

  1. 01(a)-Undue Experimentation Factors
  2. 01(b)-How to Make the Claimed Invention
  3. 01(c)-How to Use the Claimed Invention
41
Q

undue experimentation factors

A

2164

42
Q

can maintenance fee be paid in whole

A

no, can’t be paid in advance

2506 Times for Submitting Maintenance Fee Payments

43
Q

when to pay maintenance fee

A

2506 Times for Submitting Maintenance Fee Payments
Those periods, referred to generally as the “window period,” are the 6-month periods preceding each due date. The “due dates” are defined in 35 U.S.C. 41(b). The window periods are (1) 3 years to 3 1/2 years after the date of issue for the first maintenance fee payment, (2) 7 years to 7 1/2 years after the date of issue for the second maintenance fee payment, and (3) 11 years to 11 1/2 years after the date of issue for the third and final maintenance fee payment. A maintenance fee paid on the last day of a window period can be paid without surcharge. The last day of a window period is the same day of the month the patent was granted 3 years and 6 months, 7 years and 6 months, or 11 years and 6 months after grant of the patent.

44
Q

late maintenance fee

A

2506 Times for Submitting Maintenance Fee Payments
37 CFR 1.362(e) sets forth the time periods when the maintenance fees for a utility patent can be paid with surcharge. Those periods, referred to generally as the “grace period,” are the 6-month periods immediately following each due date. The grace periods are (1) 3 1/2 years and through the day of the 4th anniversary of the grant of the patent, (2) 7 1/2 years and through the day of the 8th anniversary of the grant of the patent and, (3) 11 1/2 years and through the day of the 12th anniversary of the grant of the patent. A maintenance fee may be paid with the surcharge on the same date (anniversary date) the patent was granted in the 4th, 8th, or 12th year after grant to prevent the patent from expiring.

45
Q

If a payment is submitted that conflicts with the Office record of the patentee’s entity status

A

2550 Entity Status Discounts
III.PAYMENTS NOT MATCHING THE ENTITY STATUS OF RECORD
overpayment/ underpayment notice

46
Q

The application specification as originally filed under oath includes the range of 40 - 50 grams per gallon only in the claims portion of the specification. The claims including this limitation have been rejected under 35 USC 112, 1st paragraph. An amendment to fix this defect would be:
A Re-filing the application, also under oath, this time with the information also in the specification.
B Eliminating the subject matter from the claims.
C This defect cannot be fixed.
D Amending the specification by submitting a new specification including the new matter previously only found in the claims.
E Amending the specification by adding the range of “40 - 50 grams per gallon” to the specification.

A

E
2163.06 Relationship of Written Descrip- tion Requirement to New Matter
III. CLAIMED SUBJECT MATTER NOT DIS- CLOSED IN REMAINDER OF SPECIFI- CATION

The claims as filed in the original specification are part of the disclosure and therefore, if an application as originally filed contains a claim disclosing material not disclosed in the remainder of the specification, the applicant may amend the specification to include the claimed subject matter.

47
Q

In an After Final amendment, amendments are made which place the case in condition for allowance. Because this amendment will place the case in condition for allowance:
A The remarks do not have to request reconsideration.
B The remarks do not have to show why the amendments were not earlier presented.
C No remarks are necessary.
D The remarks must address each and every objection and rejection of the examiner.
E The remarks must address each and every objection and rejection of the examiner and request reconsideration.

A

E

request reconsideration is key

48
Q
  1. Claim 1 in the application is directed to an apparatus. Claim 2 is directed to the same apparatus and further defines the apparatus. Claim 3 is directed to a method of using the apparatus set forth in claims 1 and 2. Claim 4 is an independent method claim directed to a method of using the apparatus. A rejection/objection of these claims would be:
    A Claim 3 is rejected under 35 USC 112(b), for being in improper multiple dependent form.
    B Claim 3 is objected to as being in improper multiple dependent form and is rejected under 35 USC 112(b), as being indefinite for mixing claim types.
    C Claim 4 is rejected under 35 USC 112(b), for mixing claims types in an application.
    D All of the claims are rejected under 112(a), as lacking antecedent in the specification.
    E B and C.
A

B
2173.05(p) Claim Directed to Product-By-Process or Product and Process
A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112, second paragraph.

49
Q

Your client comes into your office with an ashen face following receipt of the patent you obtained for her. The claims barely leave out an important disclosed but sadly unclaimed invention because of inartful narrowness in the claims. That very invention has been copied by her ex-husband’s company and is being sold widely. You quickly explain the basis for filing a correction to the patent. You make five statements. Which, if any, are incorrect?
A She can file either an ex parte reexamination or reissue at this early date to fix the claims. A reexam is better since the claims are already being infringed.
B She can file a reissue to broaden the claims to include subject matter given up to avoid prior art, but she must act quickly to file within two years of the issue date.
C She can file a reissue, but not an ex parte reexamination, and she must act within two years to file the reissue application.
D A certificate of correction is not possible to correct the defect in this patent.
E A and B.

A

E
for ex parte: No enlargement of claim scope. No amendment may enlarge the scope of the claims of the patent or introduce new matter. No amendment may be proposed for entry in an expired patent

A is wrong because can’t use ex parte to broaden claims
B is wrong because can’t capture through reissue what u specifically gave up through argumentation in the underlying app
C is right because she can do broaden reissue, and within 2 years

read the fucking question carefully!!!!!!!!!!!!!!

50
Q

can u interpret the scope of the claim by using abstract

A

yes

51
Q
  1. The invention is a surgical scalpel having a handgrip for left handed orthopedic surgeons. The handgrip is oriented so that it cannot be used by a right handed surgeon. In addition, the scalpel includes a light and a mirror attachment for illuminating and viewing portions of the surgical field not otherwise visible.

The prior art discloses the identical mirror image handgrip equipped scalpel for right handed surgeons, but does not include the light and mirror attachment.

The prior art also discloses a magnetic pick-up tool designed for use by mechanics who work on complex machinery. This tool can be used by either left or right handed mechanics, but does not include a special hand grip for either the left or right hand. The pick-up tool does include a light and mirror attachment to illuminate and view nooks and crannies in and -around the complex machinery.

The original claims for the invention on file in the application are as follows, and have been rejected under 35 USC 102, 35 USC 103, and 35 USC 112, 2nd paragraph.

  1. A surgical scalpel, comprising: a blade, and a handle connected to said blade.
  2. A scalpel as in claim 1, wherein: said handle includes a handgrip especially adapted for a left handed operator.
  3. A scalpel as in claim 1 further comprising: a light and mirror combination mounted to said handle.
    You propose to amend the claims as follows, and include the following associated arguments in your remarks.
    A Cancel all of the claims and submit a new claim 1 including all the features of claims 1- 3 along with the argument that there is no suggestion for the combination of the right-handed scalpel and mechanic’s light.
    B Amend claim 1 to include a particular and distinct characterization of the left-handed grip supported by the specification, along with an argument that it cannot be used by right-handed surgeons, that the prior art contains no suggestions to convert the prior art right-handed configuration and that the specifically adapted handgrip yields unexpected results. Cancel Claim 2.
    C Amend claim 1 to include the light and mirror combination, along with the argument that a novel and unobvious combination is the result and that the rejection is traversed.
    D Cancel all of the claims and submit a new claim 10 particularly describing the left-handed grip and scalpel combination with a light and mirror mounted thereto, along with arguments that the 112 rejection has been overcome and the 102 and 103 rejections no longer apply.
    E Re-write claim 1 to include all of the limitations previously present in claims 1, 2, and 3. In addition, make the argument that the prior art combination is non-analogous inasmuch as the level of skill between mechanics and surgeons is very different.
A

B
address every rejection
112b: by specifically and particularly describing…

E is wrong:
it is analogous
2141.01(a) Analogous and Nonanalogous Art
“In order to rely on a reference as a basis for rejection of an applicant’s invention, the reference must either be in the field of applicant’s endeavor or, if not, then be reasonably per­ tinent to the particular problem with which the inven­ tor was concerned.”
and 112b rejection still because of the adapted to but not how it is structured

52
Q
  1. The invention is an assembled CD holder which includes a cover member hingedly connected to a backing member. Inside the cover and backing member, the CD holder includes a snap connected to the inside surface of the cover member which retains the outer rim edge of the CD which is to be placed inside. The prior art is a conventional CD holder which includes a cover member hingedly connected to a backing member. Inside the CD cover, in the space between the cover and the backing member, is a snap which retains the CD by gripping the inner rim of the through passage in the center of the CD. You are asked to write the claims for the invented CD cover for your friend the computer wiz, and you write the following claims. Which, if any, are not indefinite.
    A A CD holder comprising: a cover member, a backing member connected to said cover member, and a snap member inside said cover and backing member which retains an outer edge of a CD which is inserted into the CD cover.
    B A combination CD holder, comprising a cover member hingedly connected to a backing member, and a snap adapted to retain said CD by retaining an outer rim edge of said CD.
    C A CD holder comprising: snap means for holding an outer rim edge of a CD, said snap means attached inside a space, defined between a cover member which is hingedly connected to a backing member, to an inwardly directed surface of said cover member.
    D A CD adapted for placement into a holder that snaps to its outer rim.
    E A CD holder consisting of a cover member hingedly connected to a backing member and having therein a snap member attached thereto which retains an outer edge of a CD.
A

C

A is wrong because location of the snap is not defined; and the said cover has not been introduced

53
Q
  1. Your client has discovered in a remote part of the South American jungle a plant called planti cokius which has remarkable curative properties when the plant is chopped, cooked, and combined with equal parts of Jack Daniels brand 100 proof sour mash whiskey. Your client claims it can cure most anything but has not performed any tests which would not result in undue experimentation to discover the dosage. Instead, your client seems to drink up most of the experiments, but is in a remarkable state of health. While discussing the invention at your office, your client becomes disoriented and tips over the earthen jug containing the mixture, and it spills onto what you thought to be a long dead office plant. The plant is revived within minutes and blossoms. You commence writing the application and include the description of the mixture as having remarkable curative properties, and also its use as a fertilizer. You write the following claims, some of which will not succeed at the Patent Office, but you want your client to be happy so that she will sign the oath and leave your office. Which claims will not be cancelled by your preliminary amendment because you know the Patent Office needs at least one claim to examine?
    A A curative mixture for treating human ailments, comprising: chopped, cooked planti cokius mixed with equal parts Tennessee whiskey.
    B A fertilizer prepared according to the following process: chopping and cooking planti cokius and mixing the chopped and cooked plant with whiskey.
    C A fertilizer mixture comprising: chopped and cooked planti cokius mixed in equal parts with Jack Daniels Old No. 7 Sour Mash 100 Proof Tennessee Whiskey.
    D A method of reviving a house plant, comprising: adding a predetermined amount of a combination of chopped and cooked planti cokius mixed with equal parts 100 proof whiskey, to the soil of said plant, allowing said plant to revive and blossom.
    E All of the above.
A

C
preamble explains its a fertilizer, which is supported by evidence and disclosure and further provides formula

A is wrong because no proof f curing aliments
B is wrong because it is a method claim body with a apparatus claim preamble
D is wrong because spec cannot support the use of “predetermined amount”

54
Q

Which of the following statements is not false?
A Claims in a patent application cannot be rejected when the disclosure fails to adequately disclose the invention.
B A claim cannot be rejected for failing to interconnect elements of the invention, when it is clear to one of ordinary skill where the elements would go.
C A claim can be rejected for including improper connection, even if undue experimentation is not required to perform the invention.
D A claim can be rejected as being vague and indefinite when all of the words and phrases can be found and defined in the supporting specification, if the examiner believes more definite words could have been used in the field.
E C and D.

A

C
B is wrong because claims must particularly define the invention and failing to interconnect elements will lead to a 112b rejection

55
Q

112b

A

can’t vaguely saying A is adapted for, but need to say how it is structured
have to define location of elements

2173.05 Specific Topics Related to Issues Under 35 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112, Second Paragraph [R-11.2013]

56
Q
  1. Your client has invented a new animal shampoo in her basement lab. Her husband was looking for a gasoline additive for the chain saw and, in the dimly lit basement, mistakenly picked up some of her shampoo and used it in the chain saw fuel mix. Surprisingly, the chain saw had more power and, even more remarkably, produced no visible smoke at all. Upon returning to the lab and conducting tests, your client confirms that the shampoo acts as a catalyst and makes the fuel in the chain saw burn at a 100% conversion rate into pure steam and carbon dioxide. Your client and co-inventor husband hasten to your office, chain saw in hand, to seek immediate help in writing the claims. You are away on extended leave in the Caymans on a patent attorney diving retreat and are unable to help. A senior partner, who has not written claims in years, but who has been left behind to mind the firm, is available to help. He crafts the following claims. Which claims will the Patent Office not reject, if any.
    A An animal shampoo for use in a chain saw fuel whereby 100 % burning takes place and steam and carbon dioxide are the result.
    B A chain saw fuel comprising shampoo and gasoline mixed so that no pollution comes out of the saw upon activation of the motor.
    C A mixture of animal shampoo and gasoline for use as a fuel, wherein complete combustion of the fuel occurs in a chainsaw.
    D A catalyst for use as a fuel additive which results in 100% conversion of the fuel into steam and carbon dioxide.
    E The Patent Office will reject all of the above.
A

E

all 4 others incorporate the hope for result rather than providing a definite formula for the compound

57
Q
  1. The claims read as follows to a bicycle built for two.
  2. A bicycle built for two comprising: a bicycle frame having two seat posts; two pairs of handlebars, said first pair mounted on a forward end of said frame, connected to said front wheel for steering said front wheel, said second pair mounted behind said second seat post; and a back wheel connected rotatably to said frame at a rearward end thereof for supporting said frame as it rolls over a surface.
    Which of the following rejections of the claim is proper?
    A A “first pair” lacks antecedent basis.
    B A “second pair” lacks antecedent basis.
    C The “front wheel” lacks antecedent basis.
    D The respective sets of handle bars have more than one attachment to the frame which results in a vague and indefinite claiming for failure to properly interconnect elements as required under 35 USC 112(b).
    E All of the above.
A

E

58
Q
  1. To comply with 112, 1st paragraph, support requirements in the specification, the applicant cannot leave out any except one of the following:
    A At least one successful example of applying the invention for its stated utility so that undue experimentation is not required to prove utility by another in the field.
    B The best mode of practicing the invention known to the inventor at the time of filing the application.
    C A written description of sufficient adequacy to enable one of skill in the art to practice the invention.
    D A written description sufficient to make and use the invention.
    E The best mode of the invention known to co-workers of the inventor who had made this best mode known to the inventor who thought it over and agreed it was better than what he had come up with on his own.
A

A
A is right because it is not necessary to provide a successful example in the spec

E is wrong because best mode is of the inventor and here inventor adopted this best mode

59
Q
  1. Which of the following factors should be considered when examining claims that contain functional language in order to determine whether the language is ambiguous?
A

2173-Claims Must Particularly Point Out and Distinctly Claim the Invention
2173.05g Functional Limitations
Examiners should consider the following factors when examining claims that contain functional language to determine whether the language is ambiguous: (1) whether there is a clear cut indication of the scope of the subject matter covered by the claim; (2) whether the language sets forth well-defined boundaries of the invention or only states a problem solved or a result obtained; and (3) whether one of ordinary skill in the art would know from the claim terms what structure or steps are encompassed by the claim. These factors are examples of points to be considered when determining whether language is ambiguous and are not intended to be all inclusive or limiting.

60
Q

Which of the following structural terms have been found to potentially invoke § 112(f)?

A

2181 Identifying and Interpreting a 35 U.S.C. 112(f) or Pre-AIA 35 U.S.C. 112, Sixth Paragraph Limitation

I. DETERMINING WHETHER A CLAIM LIMITATION INVOKES 35 U.S.C. 112(f) or PRE-AIA 35 U.S.C. 112, SIXTH PARAGRAPH

A.The Claim Limitation Uses the Term “Means” or “Step” or a Generic Placeholder (A Term That Is Simply A Substitute for “Means”)

The following is a list of non-structural generic placeholders that may invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, paragraph 6: “mechanism for,” “module for,” “device for,” “unit for,” “component for,” “element for,” “member for,” “apparatus for,” “machine for,” or “system for.”

61
Q

To determine whether a word, term, or phrase coupled with a function denotes structure, examiners should check whether:

A

2181 Identifying and Interpreting a 35 U.S.C. 112(f) or Pre-AIA 35 U.S.C. 112, Sixth Paragraph Limitation

I. DETERMINING WHETHER A CLAIM LIMITATION INVOKES 35 U.S.C. 112(f) or PRE-AIA 35 U.S.C. 112, SIXTH PARAGRAPH
C. The Term “Means” or “Step” or the Generic Placeholder Must Not Be Modified By Sufficient Structure, Material, or Acts for Achieving the Specified Function

To determine whether a word, term, or phrase coupled with a function denotes structure, examiners should check whether: (1) the specification provides a description sufficient to inform one of ordinary skill in the art that the term denotes structure; (2) general and subject matter specific dictionaries provide evidence that the term has achieved recognition as a noun denoting structure; and (3) the prior art provides evidence that the term has an art-recognized structure to perform the claimed function

62
Q

A rejection under §112(b) may be appropriate in which of the following situations when examining means-plus-function claim limitations under §112(F)?

A

2181 Identifying and Interpreting a 35 U.S.C. 112(f) or Pre-AIA 35 U.S.C. 112, Sixth Paragraph Limitation

III. DETERMINING 35 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112 SECOND PARAGRAPH COMPLIANCE WHEN 35 U.S.C. 112(f) or Pre-AIA 35 U.S.C. 112 SIXTH PARAGRAPH IS INVOKED

A rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph may be appropriate in the following situations when examining means-plus-function claim limitations under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:

(1) when it is unclear whether a claim limitation invokes35U.S.C.112(f)orpre-AIA35U.S.C.112, sixth paragraph;
(2) when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is invoked and there is no disclosure or there is insufficient disclosure of structure, material, or acts for performing the claimed function; and/or
(3) when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is invoked and the supporting disclosure fails to clearly link or associate the disclosed structure, material, or acts to the claimed function.

63
Q
  1. With respect to a patent application directed to a computer-implemented process , which of the following is false?
    A It is sufficient to claim a means for performing a particular computer-implemented function and then to disclose a general-purpose computer as the structure designed to perform that function.
    B If the specification explicitly discloses an algorithm, the sufficiency of the disclosure of the algorithm must be determined in light of the level of ordinary skill in the art.
    C For a computer-implemented means-plus-function claim limitation invoking §112(f), the corresponding structure is required to be more than simply a general-purpose computer or microprocessor.
    D Applicant may express an algorithm in any understandable terms including as a mathematical formula, in prose, in a flow chart, or in any other manner that provides sufficient structure.
    E A rejection under §112(b) is appropriate if the specification discloses no corresponding algorithm associated with a computer or microprocessor.
A

2181 Identifying and Interpreting a 35 U.S.C. 112(f) or Pre-AIA 35 U.S.C. 112, Sixth Paragraph Limitation

II. DESCRIPTION NECESSARY TO SUPPORT A CLAIM LIMITATION WHICH INVOKES 35U.S.C.112(f)orPre-AIA35U.S.C.112,SIXTH PARAGRAPH

B. Computer-Implemented Means-Plus-Function Limitations

A is false because merely reciting a general purpose computer is not enough. In fact, for a computer-implemented means-plus-function claim limitation invoking §112(f), the corresponding structure is required to be more than simply a general purpose computer or microprocessor. To claim a means for performing a particular computer-implemented function and then to disclose only a general-purpose computer as the structure designed to perform that function amounts to pure functional claiming.
With respect to B, D and E, the specification must sufficiently disclose an algorithm to transform a general-purpose microprocessor to the special-purpose computer.

64
Q

A process claim containing the term “computer” should:
A Not be construed as limited to a computer having a specific set of characteristics and capabilities, unless the term is modified by other claim terms or clearly defined in the specification to be different from its common meaning.
B Be given the broadest reasonable interpretation possible and should include devices such as a calculator.
C Ordinarily not be considered sufficient to satisfy the machine-or-transformation test.
D Not be rejected to under §112(a) for lack of written description because the term has a well established meaning.
E None of the above.

A

A

functional

2114 Apparatus and Article Claims — Functional Language

IV. DETERMINING WHETHER A COMPUTER-IMPLEMENTED FUNCTIONAL CLAIM LIMITATION IS PATENTABLE OVER THE PRIOR ART UNDER 35 U.S.C. 102 AND 103

patent bar (18 decks)

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