2100 Tidbits Flashcards
A specified intended use will not limit the scope of a _____.
claim
To satisfy 101, an invention must be _____.
useful
An _____ invention is not useful.
inoperative
An inoperative invention is not _____.
useful
An asserted treatment of a human disorder has the same _____ requirement as any other invention.
utility
A deficiency under 101 creates a _____ deficiency.
112 paragraph 1
A deficiency under _____ creates a 112 paragraph 1 deficiency.
101
The _____ invention is the focus of utility.
a) disclosed
b) claimed
claimed
Each _____ must be separately evaluated.
claim
Failure to state utility _____ automatically negate utility.
a) does
b) does not
does not
An asserted utility creates a(n) _____ of utility.
assumption
_____ will support therapeutic utility.
Data/testing/experiments/etc.
During examination, claims must be given their _____ interpretation consistent with the specification.
broadest possible
Words of a claim must be given their _____ meaning unless defined by the specification.
plain
Words of a claim must be given their plain meaning unless _____ by the specification.
defined
Plain meaning refers to the meaning given by a person _____.
of ordinary skill in the art
An applicant may be their own _____.
lexicographer
The _____ of a claim is non-limiting unless it breathes life and meaning into the claim.
preamble
The preamble is non-limiting if it recites a(n) _____ property.
inherent
The preamble _____ further limit the claim if it does more than merely state the purpose.
a) may
b) may not
may
That which is _____ does not become patentable by discovery of a new property.
old
A device _____ a method if the process is carried out during normal operation.
anticipates
A prior art product appearing to be substantially identical to the claimed invention places the burden of proof on the _____.
applicant
The manner of _____ cannot distinguish an apparatus claim.
operating
The material or article worked on does not limit _____ claims.
apparatus
Prior art is presumed to be _____.
operable
Pictures and drawings ____ constitute enabling prior art.
a) may
b) may not
may
The _____ of an invention need not be disclosed in a reference in order to be anticipated.
utility
In some circumstances, a factual reference need not _____ the filing date.
antedate/predate/precede
Proportions in drawings are not _____ of actual proportions.
evidence/indicative
A secret foreign patent may be pre-AIA 102__ prior art, but not pre/post-AIA 102(a)/(b) prior art until it is accessible.
(e)
A secret foreign patent may be pre-AIA 102(e) prior art, but not pre/post-AIA 102__ or 102__ prior art until it is accessible.
(a) or (b)
_____ applications disclosed to the public are prior art.
Abandoned
Material canceled from an application cannot be used for a pre-AIA 102__ rejection.
(e)
Material _____ from an application cannot be used for a pre-AIA 102(e) rejection.
canceled
A reference is _____ if it is accessible to the public.
“printed”
A thesis on a library shelf _____ a publication if accessible.
a) is
b) is not
is
Confidential internal documents _____ publications
a) are
b) are not
are not
Admissions constitute _____.
prior art
A(n) _____ preamble is an implied admission.
Jepson
A Jepson preamble is an implied _____.
admission
A specific example/value in a _____ anticipates.
range
An invention _____ overcome anticipation by non-analogous prior art.
a) will
b) will not
will not
Pre-AIA 102(a) “known” or “used” means _____.
public
A product-by-process or process claim can be disqualified under pre-AIA 102__ if the process can be determined from a product for sale.
(b)
“By others” means any combination that is different from the _____.
inventorship/inventive entity
A rule 131 affidavit can overcome prior art under _____.
Pre-AIA 102(a)
How many use(s) may bar an invention under pre-AIA 102(b)?
one
Unrestricted use by third parties is _____.
public use
_____ and _____ sales may bar under pre-AIA 102(b).
secret and conditional
Sold but undelivered product ____ bar under pre-AIA 102(b).
a) may
b) may not
may
Consent of the inventor(s) _____ required to create a pre-AIA 102(b) for-sale bar.
a) is
b) is not
is not
Objective evidence of intent to sell _____ required for a pre-AIA 102(b) for-sale bar.
a) is
b) is not
is
An invention _____ be complete or reduced to practice at the time of sale to create a pre-AIA 102(b) for-sale bar; a certainty of nature and usefulness must be present.
a) must
b) need not
need not
_____ use does not count as prior art if any commercial exploitation is incidental.
experimental
Any commercial activity incidental to experimental use must be solely to advance product _____ without attempt to penetrate the market.
development
The inventor must maintain control during testing by _____ for the use to be experimental.
third parties
Market testing _____ permitted.
a) is
b) is not
is not
Derivation requires _____ and _____.
complete conception by another
communication
Under AIA, any act, patent, or publication that occurs in _____ is prior art if before filing date.
the world
Only art within _____ months of the filing date may be disqualified if they originate from the inventor.
12
Commonly owned, previously filed, but not yet issued US/PCT applications may be disqualified as prior art of they originate from ______.
the inventor
Common ownership exclusion of prior art includes _____ that existed before the filing date, whose scope gave rise to the subject matter, and whose members are disclosed to the PTO.
joint ventures / research agreements
Only US patents, published applications, and PCTs can be used as prior art as of their _____ date.
earliest effective filing
Third-party “intervening” disclosures that occur between 1 year prior to filing and the filing date may be overcome with a disclosure originating from ____ and dated within _____ months prior to filing.
the inventor
12
An inventor must contribute to the _____ of an invention.
conception
As long as the inventor maintains intellectual domination, _____ may be adopted from others.
suggestions/ideas
_____ requires contemporaneous recognition and appreciation of the invention.
Conception
The testing required to establish reduction to practice depends on the _____ of the invention.
nature
There can be no ______ until the utility of the invention is known.
reduction to practice
Probable utility is not ______.
enough / utility / acceptable / sufficient
In order to be prior art under 103, the art must be _____.
analagous
Prior art must suggest _____ of combination.
desirability/motivation
Where references conflict on whether to combine or not, the _____ power of each must be weighed.
suggestive
The mere fact that references can be _____ is not enough to prove obviousness.
combined
The fact that combining references is within average skill in the art is not enough to justify a _____ rejection.
103
Some degree of _____ is required to combine references.
predictability
Predictability of a combination of references must be at the time the invention under examination was _____.
made / invented (aka filing date)
Unsupported limitations _____ be considered by the examiner.
a) must
b) need not
must; all limitations must be considered
The rationale to combine references _____ come from common knowledge.
a) may
b) may not
may
The expectation of _____is the strongest rationale to combine references.
advantage / success
Implicit disclosure in a reference may be used as grounds for a _____ rejection.
103
Elimination of a step is _____ if the function is not desired.
obvious
Elimination of an element while retaining function is indicia of _____.
unobviousness
Automating manual activity is _____.
obvious
A change in size, proportion, shape, or sequence, absent different performance, does not _____ from prior art.
distinguish
Making portable, integral, separable, adjustable, or continuous does not distinguish, unless ___ or ____ results emerge.
new, unexpected
Reversal of parts, duplication of parts, rearrangement of parts, and/or optimization _____ distinguish from prior art.
a) does
b) does not
does not
An argument cannot replace _____.
evidence
Examiner’s rationale of hindsight, “obvious to try” with hindsight, lack of suggestion to combine, lack of unpredictable result, or references that teach away _____ be argued against.
a) can
b) cannot
can
The specification must be enabling as of _____.
the filing date
In order to be enabling, no undue _____ can be required.
experimentation
Enablement must be commensurate with the _____ of the claims.
scope
A specific example, designation, or update following priority of best mode ______ required.
a) is
b) is not
is not
A term may not be defined _____ to its usual meaning.
repugnant / opposite
The requirement for clarity and precision in an application must be balanced with the limitations of _____.
language
An unreasonable number of claims leads to a rejection for _____.
multiplicity
A claim _____ be properly rejected as an old combination (i.e. an inventor’s improvement or contribution comprises but one element of a generally old combination, but the entire combination is claimed).
a) should
b) should not
should not
Active concealment of best mode _____ required to fail to satisfy the best mode requirement.
a) is
b) is not
is not
The best mode requirement _____ fulfilled if the best mode is accidentally concealed.
a) is
b) is not
is not
Evidence of concealment is the _____ consideration in determining the adequacy of a best mode disclosure.
a) best
b) only
only
If the quality of an applicant’s best mode disclosure is exceedingly poor, it may effectively result in _____.
concealment
A single means claim, i.e. where a means recitation does not appear in combination with another recited element of means, _____ subject to an enablement rejection.
a) is
b) is not
is
A _____ claim is a claim that recites a means-plus-function limitation as the only limitation of a claim.
single means
A single means limitation that is properly construed will cover all means of performing the claimed function, and is therefore _____.
indefinite
A constructive reduction to practice _____ require an enabling specification in compliance with 112.
a) does
b) does not
does
An invented modification or combination that, if applied to prior art, would render it unsatisfactory for its intended use, _____ obvious.
a) is
b) is not
is not
An invented modification or combination that, if applied to prior art, would change its principle of operation, _____ obvious.
a) is
b) is not
is not
Product-by-process claims are limited by and defined by the process; determination of patentability is based on the _____.
product
A product-by-process claim that claims the same product as disclosed in prior art but made by a different process is _____.
not patentable
A factual reference ____ antedate filing to show that:
-undue experimentation would have been required
-a parameter from the claims was/was not critical
-a statement in the specification was inaccurate
-the invention was inoperative or lacked utility
-a claim was indefinite
-characteristics of prior art products were known
-level of ordinary skill at/around time of filing
a) must
b) need not
need not
A factual reference _____ antedate filing to show that:
-the spec was enabling given the state of the art
-the spec was 112-compliant given the state of the art
a) must
b) need not
must
The transitional phrase “_____” limits the scope of a claim to the specified materials or steps and those that do not materially affect the basic and novel characteristics of the claimed invention.
consisting essentially of
The transitional phrase “consisting essentially of” may apply to apparatus claims _____ method claims.
a) but not
b) and
and
A rejection under 102 and 103 _____ be made when the prior art product seems identical to the claimed product, but is silent as to an inherent characteristic.
a) can
b) cannot
can
Where an applicant claims a composition in terms of a function, property, or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under _____ and _____.
102 and 103
