Chapter 2100

Question 1

Under 35 USC 101, what are the 4 categories a claimed invention must fall under?

Answer 1

It defines the 4 categories of invention that the Congress deemed to be appropriate subject matter of a patent.

1. Processes (“actions”)
2. Machines (“things” or “products”)
3. Manufactures (“things” or “products”)
4. Compositions of Matter (“things” or “products”)

Question 2

What is the Mayo test?

Answer 2

1. To determine whether the claims are directed to an abstract idea, a law of nature or a natural phenomenon
2. If yes, then enter “search for an inventive concept” to determine when the claim recites additional elements that amount to significantly more than the judicial exception

Question 3

What is 35 USC 112(b) and pre-AIA 35 USC 112 2nd paragraph?

Answer 3

1. the claim set forth the subject matter applicants regard as the invention
2. the claims particularly point out and distinctly claim the invention

Question 4

What is 35 USC 112(a) and pre-AIA 35 USC 112 1st paragraph?

Answer 4

1. adequate written description
2. enablement
3. best mode

Question 5

What is adequate written description requirement?

Answer 5

An applicant’s specification must reasonably convey to those skilled in the art that the applicant was in possession of the claimed invention as of the date of invention

Question 6

What is enablement requirement?

Answer 6

An applicant’s specification must enable a person skilled in the art to amke and use the claimed invention without undue experimentation

Question 7

What is the Best Mode requirement?

Answer 7

2-part inquiry

1. at the time the application was filed, did the inventor possess a best mode for practicing the invention and
2. if the inventor did possess a best mode, does the written description disclose the best mode such that a person skilled in the art could practice it?

Question 8

What is 35 USC 102?

Answer 8

Requirement that the inveniton must be movel

Question 9

What is 35 USC 103?

Answer 9

Requirement that the invention must be non-obvious

Question 10

What is 35 USC 101?

Answer 10

Outlines the requirements of Inventions patentable

Question 11

What are the 4 requirements of 35 USC 101?

Answer 11

1. Whoever invents or discovers an eligible invention ma obtain only 1 patent therefor (prohibition against double patenting)
2. For applications filed before September 16, 2012, inventor(s) must be the applicant in an application. For applications filed after September 16, 2012, the inventor or each joint inventor must be identified in an application
3. A claimed invention must fall within 1 of 4 eligible categories of invention (1. process, 2. machine, 3. manufacture, 4. composition of matter)
4. A claimed invention must be useful or have a utility that is specific, substantial, and credible

Question 12

What cannot be patented?

Answer 12

abstract ideas

laws of nature

natural phenomena

scientific truths

mathematical expressions

*however, a system/methods/products embodying/utilitizing these subject mater and perform a real world function may be patentable

Question 13

What are Business Method Patents?

Answer 13

a class of patents which discloses and claim methods of doing business

business methods that relate to industries that utilize technology to automate a process

Question 14

What is “machin-or-transformation” test?

Answer 14

it’s an appropriate test for patent-eligible subject matter for business methods

under this test, a business method is patentable if it is:

tied to a particular machine or apparatus or

transforms a particular article into a different state or thing

if a method is either tied to a particular machine or transforms some object, it is patentable

Question 15

What are some circumstances claims are rejected under Section 101?

Answer 15

if the applicant fails to identify any specific and substantial utility for the invention or fails to disclose enough information about the invention to make its usefulness immediately apparent, the examiner may issue a rejection based on lack of utility

case where an applicant’s assertion of specific and substantial utility for an invention is not credible

Question 16

What are the 3 components of the Utility Requirement?

Answer 16

specific

substantial

credible

Question 17

Does the rejection based on lack of utility under Section 101 automatically tied to deficiency under Section 112?

Answer 17

Yes, if an invention is useless, then the applicant’s specification cannot teach one how to use it

However, rejection under 112 for lack of enablement does not necessarily mean it lacks utility under Section 101

Question 18

How are claims interpreted during patent examination?

Answer 18

the pending claims must be given their broadest reasonable interpretation consistent with the specification

broad standard ensures that a claim, once issued, will not be interpreted more broadly than is justified

Question 19

How are the claims interpreted in court?

Answer 19

standards used by courts construe an issued claim as one of POSITA would construe the claim at the EFD of the patent and in light of the specification and other evidence

what would the fixed claims mean to a POSITA?

what is the patent realistically disclosing to the public?

*the patent office is using a notably broader standard when examining patent claims than court uses to construe an issued claims

Question 20

What are 2 important features of claim construction?

Answer 20

an applicant can be his own “lexicographer” and set forth his own definition different from ordinary and customary meaning

it is improper for the court and the PO to import limitations from the specification into the claims, thereby narrowing the scope of the claims

Question 21

What qualifies for rejection under Section 102?

Answer 21

express or inherent teachings of prior art reference may be relied upon in the rejection of claims

Question 22

What is the difference between expressly disclosed and inherency of a reference?

Answer 22

expressly disclosed is easy to ascertain from simple reading of reference

inherent teachings of prior art reference is a question of context of anticipation and obviousness

To establish inherency, the missing matter must necessarily be present in the thing described in the reference.

Question 23

What is a Product-by-Process claims?

Answer 23

it’s an authorized claim type written in the form of a product but with process limitation

patentability of a product-by-process claim is based on the product itself and not on the method of production

if the product in the product-by-process claim is the same as or obvious from a prior art product, then the claim is unpatentable even though the product was made by a different process

Question 24

What is a general rule of using a prior art reference to reject a claim?

Answer 24

if prior art reference is good for all that it teaches a POSITA, then the reference may be used to reject a claim under Section 102 and/or 103 if the reference expressly, inherently, or implicitly discloses the subject matter claimed

Question 25

Does the prior art need to provide an enabling disclosure before it is used to reject a claim?

Answer 25

Yes, the prior art MUST provide an enabling disclosure before it may be used to reject a claim

it must teach a POSITA on how to make or use the invention

if the reference is relied on expressly anticipates or makes obvious all of the elements of the claimed invention, the reference is presumed to be operable

Question 26

When is a printed publication constitute as prior art?

Answer 26

as of the date the publication was publicly accessible

Question 27

Is an applicant’s statement in the specification or made during prosecution identifying the work of another as “prior art” count as admission as prior art?

Answer 27

Yes, it is relied upon for both anticipation and obviousness determinations, regardless of whether the admitted prior art would otherwise qualify as prior art

Therefore, prosecutors should be careful when labeling subject material as “prior art” because such admission can be used against the applicant in the prosecution/litigation

Question 28

Is listing a reference in IDS considered an admission as prior art?

Answer 28

It is NOT an admission that the reference is prior art against claims

It just means that it’s material to patentability

Question 29

What is Section 102(b)?

Answer 29

it’s a statutory bar to the patentability of an invention.

it also sets forth both the “public use” and “on-sale” statutory bars

for any activity occurring more than 1 year prior to the EFD of the patent application, and for the activity to occur in the US

Question 30

What is the Public Use bar?

Answer 30

public use can be used as a bar if the use was:

accessible to the public or

commercially exploited

public knowledge of the invention does not warrant a rejection

an inventor’s private use of his invention, for his own enjoyment, is not public use because it was not accessible to public

Question 31

What is “on-sale” bar?

Answer 31

On-sale bar is triggered if the invention is both

the subject of a commercial offer for sale, (not for experimental purposes) AND

the invention was ready for patenting at the time of sale

*assignment or sale of the patent rights in the invention does not constitute a sale within the ambits of section 102(b)

it must be a sale of an embodiment from a seller to a buyer

Question 32

Is experimental use count as a bar under section 102(b)?

Answer 32

No. if the use or sale was experimental, and it represents a bona fide effort to perfect the invention or to ascertain whether it will answer its intended purpose, there is no bar under Section 102(b)

if commercial exploitation has occurred, it must merely be incidental to the primary purpose of the experimentation to perfect the invention

Question 33

Under AIA, can the Best Mode requirement be used to attack validity of a patent?

Answer 33

No, it cannot be used to attack the validity of an issued patent in any infringement or validity lawsuit during civil litigation

Applies to all court proceedings filed on or after September 16, 2011

Only applies in civil litigation and not for examination purposes

Question 34

Should someone who invents some collateral subject matter not claimed in the application, should they be listed as an inventor?

Answer 34

No, only inventors of the subject matter claimed in the application must be named

Question 35

Can a list of inventors be amended?

Answer 35

Yes

Question 36

Who is considered an inventor?

Answer 36

who conceived the invention, contributes to the conception

merely reducing to practice an invention is not enough

Question 37

What is the primary purpose of the written description requirement?

Answer 37

To clearly convey the subject matter than an applicant has invented

Question 38

How does an examiner test to see if the written description requirement has been met?

Answer 38

a patent application’s specification must describe the claimed invention in sufficient detail that a POSITA can reasonably conclude that the inventor had possession of the claimed invention as of EFD

Question 39

What is the purpose of enablement requirement?

Answer 39

to ensure that the applicant communicated the invention to the public in a meaningful way

in exchange for a patent application, the applicant is required to publicly disclose the invention in the patent application

Question 40

How to tell if the enablement requirement has been met?

Answer 40

information contained in the disclosure of an application must be sufficient to inform those POSITAs to both make and use the claimed invention without undue experimentation

*just because an experimentation is complex, does NOT make it undue

Question 41

What is the purpose of the best mode requirement?

Answer 41

It’s a safeguard against the desire on the part of some applicants to obtain patent protection without making a full disclosure to the public, as required by the statute

Does not permit the applicants to disclose only what they know to be their second best embodiment while retaining the best for themselves

Question 42

How to test if an applicant has complied with the best mode requirement?

Answer 42

2-prong inquiry

1. it must be determined whether, at the time of the application was filed, the inventor possessed a best mode for practicing the invention - subjective inquiry that questions the inventor’s state of mind at the time of filing
2. if the inventor did possess the best mode, it must be determined whether the written description disclosed the best mode such that a POSITA could practice it - objective inquiry that focuses on the scope of the claimed invention and the level of skill in the art

Question 43

What are the 2 requirements for claims of a patent applications under 35 USC 112, second paragraph?

Answer 43

1. the claims must set forth the subject mater that the applicant regards as his invention (subjective so rarely imposed)
2. the claims must particularly point out and distinctly define the metes and bounds of the invention (clear)

Question 44

What did 35 USC 112, 6th paragraph set?

Answer 44

It set forth a special type of claim called a “means plus function” claim as a way to set forth a limitation within a claim

Question 45

Under what conditions are claim limitations presumed to be “means plus function” limitation?

Answer 45

the claim limitation uses the phrase “means for” or “step for”

the limitation is modified by functional language

the limitation does NOT contain sufficient structure, material, or acts for achieving the specified function

overall, a limitation will be construed as a means plus function limitation if the limitation contains the magic “means for” or “step for” language, includes a function, and does not recite the structure employed for carrying out the function

Question 46

What happens if it is unclear whether the claim limitation fails within the scope of the Section 112, 6th paragraph?

Answer 46

a rejection is appropriate

Question 47

What happens if the specification does not disclose structure for performing the recited function?

Answer 47

It fails to satisfy the requirements of 35 USC 112, 2nd paragraph since the applicant failed to point out and distinctly claim the invention