Patentability Requirements (2100)

Question 1

What are the four statutory categories of patentable subject matter under §101?

Answer 1

Process, machine, manufacture, and composition of matter.

Question 2

What are judicial exceptions to §101?

Answer 2

Laws of nature, natural phenomena, and abstract ideas.

Question 3

What is the Alice/Mayo test for patent eligibility?

Answer 3

A two-step test: (1) is the claim directed to a judicial exception, and (2) does it include an inventive concept?

Question 4

What is an ‘inventive concept’ under the Alice/Mayo test?

Answer 4

An element or combination of elements that is sufficient to ensure the claim amounts to significantly more than a judicial exception.

Question 5

Can software be patentable under §101?

Answer 5

Yes, if it provides a specific improvement in computer functionality or solves a technical problem.

Question 6

What is an example of an abstract idea under §101?

Answer 6

Basic economic practices, mental processes, or mathematical relationships.

Question 7

What is an example of a natural phenomenon?

Answer 7

DNA sequences, naturally occurring correlations, or biological relationships.

Question 8

How can a claim directed to a judicial exception still be patentable?

Answer 8

By including additional elements that amount to significantly more than the exception.

Question 9

What is the significance of Diamond v. Chakrabarty?

Answer 9

It established that genetically modified organisms can be patentable.

Question 10

What does §101 not consider in assessing eligibility?

Answer 10

Novelty and non-obviousness; those are covered under §§102 and 103.

Question 11

What does §102 require for novelty?

Answer 11

The invention must not be disclosed in any single prior art reference before the effective filing date.

Question 12

What is prior art under §102(a)(1)?

Answer 12

Public disclosures such as patents, printed publications, public use, or sale before the effective filing date.

Question 13

What is the on-sale bar under §102?

Answer 13

An invention is not patentable if it was on sale more than one year before the filing date.

Question 14

What is a ‘printed publication’?

Answer 14

A document accessible to the public before the effective filing date.

Question 15

What is the ‘grace period’ under §102(b)(1)?

Answer 15

A one-year period allowing the inventor to file after their own public disclosure.

Question 16

What’s the difference between pre-AIA and post-AIA §102?

Answer 16

Pre-AIA uses ‘first-to-invent’; post-AIA uses ‘first-inventor-to-file’ and removes geographic limitations.

Question 17

What is a derivation proceeding?

Answer 17

A proceeding to show that an earlier applicant derived the invention from the true inventor.

Question 18

What is the effective filing date?

Answer 18

The earliest date on which the application as filed supports the claimed invention.

Question 19

Can foreign patents be used as prior art?

Answer 19

Yes, if published before the effective filing date under post-AIA rules.

Question 20

Can a thesis in a university library be prior art?

Answer 20

Yes, if it was accessible to the public before the effective filing date.

Question 21

What does §103 require for non-obviousness?

Answer 21

The invention must not be an obvious combination of prior art references to a person of ordinary skill in the art.

Question 22

What are the Graham factors?

Answer 22

Scope and content of prior art, differences with the claimed invention, level of skill in the art, and secondary considerations.

Question 23

What are secondary considerations?

Answer 23

Objective indicia like commercial success, long-felt need, and failure of others.

Question 24

What is the difference between anticipation and obviousness?

Answer 24

Anticipation is a single reference disclosure; obviousness combines multiple references.

Question 25

Can common sense be used in §103 rejections?

Answer 25

Yes, but must be supported by a rationale and evidence.

Question 26

What is the TSM test?

Answer 26

Teaching, Suggestion, or Motivation to combine prior art references.

Question 27

Can design choice support a §103 rejection?

Answer 27

Yes, if the change would have been obvious and results in predictable outcomes.

Question 28

What is the 'problem-solution approach'?

Answer 28

Evaluating whether the claimed invention solves a known problem using known techniques.

Question 29

Can hindsight be used in an obviousness rejection?

Answer 29

No, examiners must avoid hindsight bias.

Question 30

Can a combination of references with no clear motivation support a §103 rejection?

Answer 30

No, there must be a rationale for the combination.

Question 31

What is the written description requirement?

Answer 31

The specification must show the inventor had possession of the claimed invention.

Question 32

What is the enablement requirement?

Answer 32

The disclosure must teach someone skilled in the art to make and use the invention without undue experimentation.

Question 33

What is the best mode requirement?

Answer 33

The inventor must disclose the best way they know to carry out the invention at the time of filing.

Question 34

What is an indefinite claim under §112(b)?

Answer 34

A claim that fails to inform those skilled in the art about the scope of the invention with reasonable certainty.

Question 35

What is a means-plus-function claim?

Answer 35

A claim that describes an element by the function it performs, limited to the corresponding structure in the specification.

Question 36

How can an examiner reject a claim under §112?

Answer 36

By showing the claim lacks written description, enablement, or definiteness.

Question 37

How can an applicant rebut an enablement rejection?

Answer 37

By arguing or providing evidence that undue experimentation is not required.

Question 38

How is support for claim amendments assessed?

Answer 38

Amendments must be fully supported by the original disclosure.

Question 39

What is required for functional language under §112(f)?

Answer 39

The specification must clearly identify the structure corresponding to the function.

Question 40

What happens if the best mode is omitted?

Answer 40

It cannot be the basis for invalidation after the AIA, but may still affect enablement.

Question 41

What is the effective filing date of a continuation application?

Answer 41

The date of the earliest application in the chain that supports the claimed invention.

Question 42

Can a provisional application establish a prior art date?

Answer 42

Yes, if it supports the claimed invention.

Question 43

Can an inventor’s own disclosure be used as prior art?

Answer 43

Yes, unless it falls within the one-year grace period.

Question 44

How is a publication date established for a reference?

Answer 44

By showing when it became publicly accessible.

Question 45

What is inherency in prior art?

Answer 45

A feature is inherently disclosed if it necessarily flows from the reference.

Question 46

How does the USPTO treat undated references?

Answer 46

They are not prior art unless the publication date is proven.

Question 47

Can a product sold outside the U.S. be prior art?

Answer 47

Yes, under post-AIA rules if it was on sale or used publicly.

Question 48

What is required for a reference to be a 'printed publication'?

Answer 48

It must be sufficiently accessible to the public before the filing date.

Question 49

What is a judicial exception?

Answer 49

An idea not eligible for patenting, such as a law of nature, abstract idea, or natural phenomenon.

Question 50

What is a person of ordinary skill in the art?

Answer 50

A hypothetical person having typical knowledge in the technical field of the invention.

Question 51

What is anticipation?

Answer 51

When a single prior art reference discloses every element of a claimed invention.

Question 52

What is obviousness?

Answer 52

When the invention is an obvious combination of known elements to a person of ordinary skill.

Question 53

What is a claim?

Answer 53

A legal definition of the invention, specifying the scope of patent protection.

Question 54

What is a specification?

Answer 54

The written description of the invention, including how to make and use it.

Question 55

What is prior art?

Answer 55

Existing knowledge or publications available before the effective filing date.

Question 56

What is a provisional application?

Answer 56

A lower-cost initial patent filing that establishes an early filing date.

Question 57

What is a continuation application?

Answer 57

A second application filed for the same invention without adding new matter.

Question 58

What is a rejection?

Answer 58

An examiner's statement explaining why a claim is not allowable.

Question 59

What is a non-final office action?

Answer 59

The first substantive examination response from the USPTO.

Question 60

What is a final office action?

Answer 60

A second rejection requiring either appeal or amendment to place in condition for allowance.

Question 61

What is the MPEP?

Answer 61

Manual of Patent Examining Procedure, which guides examiners and applicants.

Question 62

What is patent eligibility?

Answer 62

Whether an invention falls into a statutory category under §101.

Question 63

What is patentability?

Answer 63

Whether an invention meets the legal requirements of novelty, non-obviousness, and disclosure.

Question 64

What is a terminal disclaimer?

Answer 64

A statement that links two patents to prevent double patenting.

Question 65

What is double patenting?

Answer 65

The improper issuance of two patents for the same invention.

Question 66

What is a dependent claim?

Answer 66

A claim that refers back to and further limits another claim.

Question 67

What is a restriction requirement?

Answer 67

An examiner's requirement to elect one invention when multiple are claimed.

Question 68

What is an appeal brief?

Answer 68

A written argument submitted to the PTAB challenging an examiner's final rejection.