MPEP 2100 Flashcards
Patentability
The Graham Factors for determining obviousness are:
- Determining the scope and contents of the prior art when the invention was made;
- Ascertaining the differences between that art and the claim(s) at issue;
- determining level of Ordinary skill in the art
- Secondary considerations
i. great commercial success
ii. Long-felt need in the art
iii. Failure of others to resolve the problem
3 steps to making a prima facie case of obviousness:
- A likelihood of success based on prior art,
- Everthing you’re claiming exists in prior art, and
- Some suggestion to combination existed in pror art.
Seven rationales for obviousness are:
- Combination of elements in prior art to yield predicatble results
- Substitution of known elements to yield predictable results
- using known technique to improve similar devices
- Applying known technique to known device to yield predictable results
- “obvious to try”
- known in one field promting predictable variations
- Some teaching in prior art that would have led OiOS to modify/combine prior art to reach claim
i. Every element AND an indication of success MUST
be present in prior art
MPEP 2100
Patentability
including Alice/Mayo subject matter eligibility and judicial exceptions
Transitional applications
37 USC 112 specification requirements
Requirements for Specs under 35 USC 112(a)
A written description,
Enablement, and
Best mode
3 Requirements for enablement:
The spec must enable OSiA to make and use invention
no undue or unreasonable research needed
must be enabling as of filing date
MPEP 216X
Best Mode requirement:
Must enable BEST MODE, not second best, not kind of like the best
Requirements for claims under 112(b)
Claims must set forth invention
Claims must define metes and bounds of subject matter to be protected
Meaning of every term should be clear and defined in app or prior art
Claim terminology can be:
crafted by applicant, can use own words as long as it’s clear and not contrary to prior art
Allowable relative claim terminology:
About
Essentially
Substantially
Relative claim terminology that is indefinite:
Similar
Type
A combination claim is non-obvious if prior art:
The prior art teaches away from the claimed combination and/or
combination yields more than predictable results.
A claimed invention is likely to be obvious if:
it is a combination of known prior art elements that would reasonably have been expected to maintain their respective properties or functions after they have been combined.
When determining whether a reference in a different field of endeavor may be used to support a case of obviousness:
it is necessary to consider the problem to be solved.
four categories of patent-eligible inventions:
Process
Machine
Manufacture
Composition of Matter
Alice/Mayo framework for patent eligibility is as follows:
(1) must be directed to one of four categories of patent-eligible inventions
(2) Must not be wholly directed to subject matter encompassing a judicial exception
(2b) If directed to judicial exception, does the claim amount to “significantly more” or have “markedly different characteristics” from the law
Categories of judicially-recognized exceptions:
Laws of nature
Natural Phenomenon
Abstract ideas
Examples of 101 ineligible subject matter:
Transitory signals
Humans
Contracts
Computer programs
A company
An arrangement of printed matter
Data
Species/Genus rule:
A claim to a species is prior art to a claim to a genus
A specific example of a category anticipates the category
If a patent examiner determines that a claim is patent-ineligible under a single patentability requirement, they must still:
evaluate the claims under each of the other patentability requirements.
“compact prosecution”
The principles of compact prosecution state that:
a complete examination should be made for every claim under each of the other patentability requirements: 35 U.S.C. 101, 102, 103, and 112
Courts have expressed concern that monopolizing the judicial exceptions (abstract ideas, laws of nature, and natural phenomenon) by granting patent rights may impede innovation rather than promote it because:
they are the basic tools of scientific and technological work.
Claims to graphical user interface improvement described is a _____, which _____ fall within the four statutory categories of invention.
The Alice/Mayo framework asks whether the claim is directed to a judicial exception, which in this case would be ________.
The Office explains that this would be directed to an abstract idea because ______ have been found to be abstract ideas.
Claims to this graphical user interface ______ be patent eligible because the claim as a whole amounts to ______ than the mathematical algorithm of calculating a scaling factor.
process within
abstract ideas
Math equations
would be more than
GPS claims have been found to be:
patentable because they have the requirement of the GPS reciever
Bingo questions are:
not patent eligible
When the examiner rejects a claim because it recites a law of nature or natural phenomenon ,it is necessary for the examiner to:
identify the natural law or phenomenon and to explain why it is considered a natural law or phenomenon.
When the specification expressly provides a special definition for a term used in the claims:
the term must be given that special meaning.
An applicant need not show that ALL disclosed utilities are _______. An applicant need only show that ONE of the disclosed utilities is _________.
credible
The level of disclosure required for a reference to be enabling prior art is no less if the reference is ______ or _________.
foreign or domestic
The level of disclosure required within a reference to make it an ‘enabling disclosure’ is the same no matter what type of prior art is at issue…. There is no basis in the statute (35 U.S.C. 102 or 103) for discriminating either in favor of or against prior art references on the basis of nationality.”
“Teaching away” can overcome ______ rejections, but not ________ rejections
103
102
“Teaching away” must advocate _______ the route, not merely __________
abandoning
suggesting
Step-plus-function limitations shall be construed to cover:
the corresponding acts disclosed in the specification AND their equivalents.
To be a prior art reference for a step-plus-function limitation, it must:
If it fails to disclose ONE of the acts:
disclose each and every act
it fails as prior art
Evidence showing routine business practices can be used to:
establish the date on which publication became accessible to the public.
Specific evidence showing when the specific document actually became available is not always necessary.
The examiner must construe the claims before _______.
The examiner must give reasons for _______
analyzing enablement;
uncertainty of enablement
Literal support for new claim language is:
not required.
open-ended transitional phrases include:
Comprising;
Containing;
Characterized by; or
Including
Given independent claim:
1. A metal alloy comprising at least 20% by volume of iron; at least 10% by volume of gallium, and at least 10% by volume of copper.
Why is the dependent claim:
Claim 2: The alloy of claim 1 containing 54% by volume of copper and 27% by volume of gallium.
indefinite?
Because 54% + 27% = 81% which leave 19% for iron, invalidating the ind. claim
the patentability of product-by-process claims is based on:
the product itself, not the process.
To overcome a product-by-process rejection, applicant must:
show evidence establishing an unobvious difference between the claimed and prior art products
During prosecution, adding or amending a claim to include an ‘essential’ element or limitation that was omitted from the original disclosure in the specification is:
Not permitted
The entire period during which diligence is required must _________ by:
Accounted for by
affirmative acts; or
acceptable excuses.
Work relied upon to show reasonable diligence must be:
directly related to the reduction to practice.
If the broad generic claim in an application includes an inoperative species of the invention, the claim _________ as long as other operable species of the invention are also ___________.
cannot be rejected
within the scope of the claim
An apparatus claim including _______ steps is _________
method;
non-statutory (not allowed)
