Exam Questions

E. None of the above

*Determine which of the following documents, if any, must also contain a separate verification statement in accordance with the patent laws, rules and procedures as related in the MPEP.* *A*. A request to correct inventorship in a pending application. *B*. A petition to make an application special. *C*. A claim for foreign priority. *D*. A substitute specification. *E*. None of the above.

*D. No, reject the claim for failing to disclose a sufficient algorithm that passes the proverbial machine or transformation test.* Explanation: The claim limitation invokes 112 ¶ 6, therefore the next step in the analysis is to determine if the specification discloses the corresponding structure, material, or acts in accordance with 112 ¶ 6. The only reference in the specification to support the means-plus-function limitation of a game control means is a standard microprocessor-based gaming machine with appropriate programming. The specification contains no guidance to determine the meaning of standard microprocessor or appropriate programming. By merely stating that a standard microprocessor is the structure without more is insufficient to satisfy the requirements of the statute. The absence of any specific algorithm for performing the recited function or any step-by-step process for performing the claimed functions of controlling images on the slot machine video screen does not satisfy 112 ¶ 6. Patentee needs to disclose an algorithm that transforms a general purpose computer to a special purpose computer programmed to perform the disclosed algorithm. The disclosure of any microprocessor with appropriate programming to perform the functions, in support of the means-plus function limitations of that claim constitutes pure functional claiming, which is contrary to the statute. Accordingly, the failure to disclose a structure corresponding to the control means for performing the recited function renders the claim indefinite. Conclusion: The claim is indefinite under 112 ¶ 2 because the disclosure only provides a statement that known techniques or methods can be used to program a general purpose computer to achieve the claimed function and does not disclose corresponding structure, which in this case requires the disclosure of a special purpose computer, an algorithm, a specific software program etc.

*Aristocrat Techs. Australia Pty Ltd, v. Intl Game Tech., 521 F.3d 1328 (Fed. Cir. 2008) originally filed as U.S. Patent No. 6,093,102 (the 102 patent): The claimed subject matter is drawn to a gaming machine, e.g. a slot machine. All the claims are at issue with the relevant claim language of independent claim 1 as follows: . . . game control means arranged to control images displayed on the display means, the game control means. . . The written description of the specification supports this means-plus-function recitation with the following disclosure: In the following detailed description, the methodology of the embodiments will be described and it is to be understood that it is within the capabilities of the non-inventive worker in the art to introduce the methodology on any standard microprocessor base gaming machine by means of appropriate programming. 102 patent, col. 2, l. 65-col. 3 l. 5. Is the disclosure of only a standard microprocessor-based gaming machine with appropriate programming sufficient to avoid an indefiniteness rejection?* *A* Yes, reject the claim based on the fact that 8051, 6809 and Z80 series microprocessors have been widely employed in various embedded devises and the disclosure of this application cites using an equivalent microprocessor / microcontroller in, including those commonly found in portable gaming devices. *B* No, accept the claim since the use of an embedded microprocessor executing a highly directed and specific algorithm in a self-contained apparatus. *C* Yes, reject the claim since it fails to disclose a sufficient definition of a sufficient algorithm necessary to pass the machine or transformation test. *D* No, reject the claim for failing to disclose a sufficient algorithm that passes the proverbial machine or transformation test. *E* None of the above.

*A. Reject the claim for being indefinite.* Explanation: Under 112, ¶2 because no objective definition identifying a standard for determining when an interface screen is ˜aesthetically pleasing was provided and that [i]n the absence of a workable objective standard, ˜aesthetically pleasing ¦ is completely dependent on a persons subjective opinion. The court stated that [t]he scope of claim language cannot depend solely on the unrestrained, subjective opinion of a particular individual purportedly practicing the invention and that some objective standard must be provided in order to allow the public to determine the scope of the claimed invention. The court further stated, A purely subjective construction of ˜aesthetically pleasing would not notify the public of the patentees right to exclude since the meaning of the claim language would depend on the unpredictable vagaries of any one persons opinion of the aesthetics of interface screens. While beauty is in the eye of the beholder, a claim term, to be definite, requires an objective anchor. See MPEP 2173.05(b).

*In a recent ruling ruled decided by a Superior Ciruit Court, in the matter of; Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 75 USPQ2d 1801 (Fed. Cir. 2005) the following claim was further rule on Representative Claim (U.S. Patent No. 6,014,137): 1. In an electronic kiosk system having a plurality of interactive electronic kiosks for displaying information provided by a plurality of information providers, a method for defining custom interface screens customized for individual kiosks of said plurality and operable to make different assortments of said information available for display at different kiosks of said plurality, said method comprising the steps of: providing a master database of information from said plurality of information providers, said master database referencing substantially all information content from said providers to be displayed on any of said plurality of kiosks; providing a plurality of pre-defined interface screen element types, each element type defining a form of element available for presentation on said custom interface screens, wherein each said element type permits limited variation in its on-screen characteristics in conformity with a desired uniform and aesthetically pleasing look and feel for said interface screens on all kiosks of said kiosk system, each element type having a plurality of attributes associated therewith, wherein each said element type and its associated attributes are subject to pre-defined constraints providing element characteristics in conformance with said uniform and aesthetically pleasing look and feel for said interface screens, and wherein said plurality of pre-defined element types includes at least one pre-defined window type, at least one pre-defined button type, and at least one pre-defined multimedia type; selecting a plurality of elements to be included in a custom interface screen under construction, said plurality of elements being selected from said plurality of pre-defined elements types, said plurality of selected elements including at least one button type; assigning values to the attributes associated with each of said selected elements consistent with said pre-defined constraints, whereby the aggregate layout of said plurality of selected elements on said interface screen under construction will be aesthetically pleasing and functionally operable for effective delivery of information to a kiosk user; selecting from said master database an assortment of information content deriving from selected ones of said information providers to define kiosk information content for an individual kiosk of said kiosk system; associating said kiosk information content with at least a portion of said selected elements for said interface screen under construction; and linking said at least one selected button type element to an action facilitating the viewing of at least portions of said kiosk information content by a kiosk user. Analysis/Conclusion: The court determined that the phrase aesthetically pleasing is indefinite How should have the patent have ruled on this matter before it was referred to Circuit Court?* *A* Reject the claim for being indefinite. *B* Allow the claim based on sufficient specify of how to enhanced the user experience is a sufficient improved over that offered by the fruit logoed smartphone companys app. *C* Reject the claim for being essentially a misguided design application for a patent. *D* Allow the application for properly clamming application of containing a method for a design application. *E* Allow the application based on the rulings contained in Datamize v. Plumtree software.

*B. A non-patent printed publication in a field unrelated to the applicants field of endeavor but relevant to the particular problem with which the inventor-applicant was concerned, which was published the day after the filing date of applicants application.* Explanation: (B) is the most correct answer. MPEP 2141.01. Quoting from Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1568, 1 USPQ2d 1593, 1597 (Fed. Cir.), cert. denied, 481 U.S. 1052 (1987), MPEP 2141.01, under the heading "Prior Art Available Under 35 U.S.C. 102 Is Available Under 35 U.S.C. 103," states "˜[before answering Grahams content inquiry, it must be known whether a patent or publication is in the prior art under 35U.S.C. 102. Subject matter that is prior art under 35 U.S.C. 102 can be used to support a rejection under section 103. Ex parte Andresen, 212 USPQ 100, 102 (Bd. Pat. App. & Inter.1981) (˜it appears to us that the commentator [of 35 U.S.C.A.] and the [congressional] committee viewed section 103 as including all of the various bars to a patent as set forth in section 102.)."Because the printed publication in (B) was not published until after the filing date of the patent application, it does not constitute prior art. (A) is incorrect because the patent pre-dates the application, therefore qualifying as prior art, and comes from the same field as the application, therefore qualifying as analogous. (C) is incorrect because the printed publication pre-dates the application, therefore qualifying as prior art, and concerns the same particular problem sought to be solved in the patent application, therefore qualifying as analogous. (D) is incorrect because the printed publication pre-dates the application, therefore qualifying as prior art, and comes from the same field as the application, therefore qualifying as analogous. (E) is incorrect because the patent issued before the application, therefore qualifying as prior art, and concerns the same particular problem sought to be solved in the patent application, therefore qualifying as analogous. The USPTO classification in a different class does not render the patent nonanalogous. See MPEP 2141.01(a) ("While Patent Office classification of references . . . are some evidence of ˜nonanalogy or ˜analogy respectively, the court has found ˜the similarities and differences in structure and function of the inventions to carry far greater weight.").

*In accordance with the patent laws, rules and procedures as related in the MPEP, which of the following does not constitute prior art upon which a primary examiner could properly rely upon in making an obviousness rejection under 35 USC 103?* *A* A U.S. patent in the applicants field of endeavor which was issued two years before the filing date of applicants patent application. *B* A non-patent printed publication in a field unrelated to the applicants field of endeavor but relevant to the particular problem with which the inventor-applicant was concerned, which was published the day after the filing date of applicants application. *C* A printed publication published more than 1 year before the filing date of applicants patent application, which publication comes from a field outside the applicants field of endeavor but concerns the same problem with which the applicant-inventor was concerned. *D* A printed publication in the applicants field of endeavor published 3 years before the filing date of applicants patent application. *E* A U.S. patent which issued more than 1 year before the filing date of applicants patent application, which the Office placed in a different class than the applicants patent application, but which concerns the same problem with which the applicant-inventor was concerned, and which shows the same structure and function as in the applicants patent application.

*A. Accept the claim as preferred with no modification.* Explanation: (A) The court explained that [a] slug is a large gas bubble that forms in a slurry bubble column reactor and extends across the full width of the column and that [i]t is understood in the art that slugs may adversely affect reactor performance and efficiency. Analysis/Conclusion: The court found the claim language substantial absence of slug flow not indefinite under 112, ¶2.

*In light of findings expressed in Exxon Research and Engg Co. v. United States, 265 F.3d 1371, 60 USPQ2D 1272 (Fed. Cir. 2001) in which the following Representative Claim (U.S. Patent No. 5,348,982 (the 892 patent)was ruled upon: A method for optimally operating a large diameter three phase (gas, liquid, solid) slurry bubble column having a diameter greater than 15 cm for Fischer-Tropsch synthesis over a supported cobalt catalyst in which solid particles are fluidized in the liquid phase by bubbles of the gas phase, comprising: (a) injecting the gas phase into said column at an average gas velocity along said column, Ug> 2 cm/sec, such that the flow regime is in the substantial absence of slug flow; (b) fluidizing the solid supported cobalt catalyst particles of average diameter, dp > 5 μm, to the height, H > 3m, of the expanded liquid in the column by operating with a catalyst settling velocity, Us, and dispersion coefficient, D, such that where and (c) maintaining plug flow in said column by operating with a gas phase velocity, Ug, expanded liquid height, H, and dispersion coefficient, D, such that wherein Ïs= effective density of the particles Ïl= density of the liquid μ= viscosity of the liquid f(Cp) = hindered settling function = volume fraction of solids in the slurry (liquid plus solids) UL = liquid velocity along the column H = height of the expanded liquid in said reactor g = gravitational constant dp = diameter of particles m = meters. The examiner working in the chemical arts department was in a quandary over how to deal with this claim. How should the examiner properly reply to the applicant in this claim?* *A* Accept the claim as preferred with no modification. *B* Reject the claim as written but suggest that the e claim be on revised based of rewording regarding the definition of language that might make it more definite. *C* Accept the claim after revision of the language surround the seeming ambiguous definition of slug. *D* Reject the claim outright based on prior art in the field of chemical compounds that employed in the definition of slugs. *E* Allow the claim because the revised rules governing the scope of eligible subject matter under the newest Guidance for Exanimation of USC 112 subject matter are sufficiently broad to encompass the use of the term slugs.

*D. (A) and (C)* Explanation: (C) or (D)Notice that the rejection is based on 102(b), so it must be pre-AIA. (Post-AIA 102(b) is not the basis for a rejection but instead the exceptions.) Claiming earlier foreign priority could overcome the publication type 102(b) bar, but not the 1 year public use and on sale bar. So, for instance, lets say a 102(b) bar was issued based on a publication. Then, (A) could be used. So, technically, (A) is sort of correct.(B) is wrong. You CANNOT overcome a 102(b) rejection by "swearing back" to an earlier conception date with a 1.131 affidavit because 102(b) does not care about invention date, only the filing date. It was likely done for this question because (A) is not completely correct or incorrect. (C) is correct. The USPTO accepted all answers when this question was used. This is usually done when there is an error in the question or multiple answer choices are correct. It was likely done here because (A) can be both correct and incorrect.

*Which of the following USPTO practices or procedures may be properly employed to overcome a rejection properly based on 35 U.S.C. 102(b)?* *A*Timely perfecting a claim to priority under 35 U.S.C. 119(a)-(d) based on a foreign application having a foreign priority filing date that antedates the reference. *B*Filing a declaration under 37 CFR 1.131 that antedates the cited prior art. *C*Timely perfecting priority under 35 U.S.C. 119(e) or 120 by amending the specification of the application to contain a specific reference to a prior application having a filing date that antedates the reference. *D*(A) and (C) *E*(A), (B) and (C)

*A. Where a patent discloses subject matter being claimed in an application undergoing examination, if the patents designation of inventorship differs from that of the application, then the patents designation of inventorship does not raise a presumption of inventorship regarding the subject matter disclosed but not claimed in the patent so as to justify a rejection under 35 U.S.C. 102(f).* Explanation: See MPEP 2137, p.2100-89. (B) is incorrect. The mere fact that the claim recites components, all of which can be argumentatively assumed to be old, does not provide a basis for rejection under 35 U.S.C. 102(f). Ex parte Billottet, 192USPQ 413, 415 (Bd. App. 1976); MPEP 2137. (C) is incorrect. One must contribute to the conception to be an inventor. In re Hardee, 223 USPQ 1122, 1123 (Commr Pat. 1984). Unless a person contributes to the conception of the invention, the person cannot be an inventor. Fiersv. Revel, 984 F.2d 1164, 1168, 25 USPQ2d 1601, 1604-05 (Fed. Cir. 1993); MPEP 2137.01(section styled "An Inventor Must Contribute To The Conception of the Invention"). (D) is incorrect. An inventor may consider and adopt suggestions from many sources. Morse v.Porter, 155 USPQ 280, 283 (Bd. Pat. Inter. 1965); New England Braiding Co. v. A.W. ChetertonCo., 970 F.2d. 878, 883, 23 USPQ2d 1622, 1626 (Fed. Cir. 1992); MPEP 2137.01 (section styled "As Long As The Inventor Maintains Intellectual Domination Over Making The Invention, Ideas, Suggestions, And Materials May Be Adopted From Others"). (E) is incorrect. In re DeBaun, 687 F.2d 459, 463, 214 USPQ 933, 936 (CCPA 1982) ("there is no requirement that the inventor be the one to reduce the invention to practice so long as the reduction to practice was done on his behalf"); MPEP 2137.01 (section styled "The Inventor Is Not Required To Reduce The Invention To Practice). but see also: 2136.04 "A DIFFERENT INVENTIVE ENTITY IS PRIMA FACIE EVIDENCE THAT THE REFERENCE IS "BY ANOTHER""

*Which of the following statements best correctly describes current PTO practice and procedure?* *A*Where a patent discloses subject matter being claimed in an application undergoing examination, if the patents designation of inventorship differs from that of the application, then the patents designation of inventorship does not raise a presumption of inventorship regarding the subject matter disclosed but not claimed in the patent so as to justify a rejection under 35 U.S.C. 102(f). *B* The fact that a claim recites various components, all of which can be argumentatively assumed to be old, provides a proper basis for a rejection under35 U.S.C. 102(f). *C* A person can be an inventor without having contributed to the conception of the invention. *D* In arriving at conception, an inventor may not consider and adopt ideas and materials derived from other sources such as an employee or hired consultant. *E* It is essential for the inventor to be personally involved in reducing the invention to actual practice.

*E. A, B, and C* Explanation: Accordingly, examiners will apply 35 U.S.C. 112, sixth paragraph to a claim limitation < if it meets the following 3-prong analysis: (A) ** > the claim limitation uses the phrase "means for" or "step for" or a non-structural term (a term that is simply a substitute for the term "means for") < ; (B) the > phrase < "means for" or "step for" > or the non-structural term < must be modified by functional language; and (C) the phrase "means for" or "step for" > or the non-structural term < must not be modified by sufficient structure, material, or acts for achieving the specified function.

*A claim limitation will be presumed to invoke 35 U.S.C. 112, sixth paragraph, if it meets the following?* *A* the claim limitations must use the phrase "means for" or "step for;" *B* the "means for" or "step for" must be modified by functional language; and *C* the phrase "means for" or "step for" must not be modified by sufficient structure, material, or acts for achieving the specified function *D* A and B only *E* A, B, and C

*E. Allow the claim since it does not invoked limitations defined in 35 UC 112 sixth paragraph* Explanation: The claim limitation does not use means for language to invoke 35 U.S.C. 112, sixth paragraph. The non-structural term member is used, and preceded by a non-structural modifier reciprocating. The claim term reciprocating is descriptive of a function and does not impart any specific structure. The non-structural claim term member is subsequently modified by several structural language limitations. The claim term reciprocating member is claimed, inter alia, as having a first and second end with the second end of each reciprocating member structure being attached to a pulley, and both reciprocating members being operatively connected to a pivotal linkage assembly. These multiple claim recitations that impart structure onto the claim term reciprocating member indicate that the limitation should not be interpreted under 35 U.S.C. 112, sixth paragraph. Conclusion: 35 U.S.C. 112, sixth paragraph is not invoked. The above analysis is in accordance with the analytical framework of the 2011 Supplementary Guidelines to determine whether a limitation invokes 35 U.S.C. 112, sixth paragraph.

*In CCS Fitness, Inc., v. Brunswick Corp., 288 F.3d 1359 (Fed. Cir. 2002) U.S. Patent Nos. 5,924,962 (the 962 patent); 5,938,567 (the 567 patent); and 5,683,333 (the 333 patent) the claimed subject matter is drawn to stationary cardio-vascular exercise devices. Claim 9 of the 962 patent sets forth the relevant claim language, which is representative of the claim language also used in the 567 and 333 patents, reads as follows: 9. An apparatus for exercising comprising: a frame having a base portion adapted to be supported by a floor; first and second reciprocating members, each reciprocating member having a first and a second end, a portion of said first and second reciprocating members being adapted for substantially linear motion; a coupling member having (i) a pulley supported by said frame defining a pivot axis, and (ii) means for attaching said second ends of said first and second reciprocating members to said pulley so that rotation of said pulley results in orbital movement of said second ends of said first and second reciprocating members about said pivot axis while a portion of each of said first and second reciprocating members distal said second end of each first and second reciprocating members move in a reciprocating pattern; and first and second pivotal linkage assemblies operatively connected with a respective first and second reciprocating member at a location intermediate the first and second ends of said reciprocating member for orienting the bottom of the feet of the user of the apparatus so that each foot of the user follows a substantially elliptical path during operation of the apparatus. Question: Does the claim limitation reciprocating member . . . adapted for substantially linear motion sufficiently recite a limitation defined in 35 U.S.C. 112, sixth paragraph?* *A* The examiner should recognize that this is no more than a simple variation of a StairMaster and reject the claim without invoking 35 USC112 but on the basis of established prior art using MPEP sections 706.02, 706.07 and/or 2123 or 2128. *B* Reject the claim on the re-use of a pivotal reciprocating member as previously described in US Patent 5140923 A. *C* Reject the patent based on the re-application of a pivotal reciprocating arm as previously defined in established US Patents in the fields of reciprocating saws and articulating arms employed in movable TV mounts. *D* Allow the claim since it does not invoke infrangibly limited elements contained in the prior art. *E* Allow the claim since it does not invoked limitations defined in 35 UC 112 sixth paragraph.

*D. No, reject this claim using a finding that even though it does not directly invoke 35 USC 112 paragraph 6, it is sufficiently vague to be disallowable subject matter.* Explanation: The claim limitation does not use means for language to invoke 35 U.S.C. 112, sixth paragraph. The non-structural term member is used, and preceded by a modifier movable link that does not clearly indicate that it is either a structural or non-structural modifier. The claim term movable link member is not defined as structure in the specification, has no dictionary definition connoting structure, and does not have a known structural meaning in the relevant art. Therefore, the movable link modifier is considered a non-structural modifier. The non-structural claim term member is subsequently modified by functional language that sets forth two functions: (1) for holding the lever out of engagement with the cam surface before entry of a combination, and (2) for releasing the lever after entry of the combination. Therefore, despite the lack of means for language, the limitation is considered to have invoked 35 U.S.C. 112, sixth paragraph and should be treated accordingly. Further, no other terms in the claim exist that would impart structure to the movable link member to remove this limitation from 35 U.S.C. 112, sixth paragraph. Conclusion: 35 U.S.C. 112, sixth paragraph is invoked. MPEP 2181.

*In Mas-Hamilton Group, v. LaGard, Inc., 156 F.3d 1206 (Fed. Cir. 1998) United States Patent No. 5,307,656 (the 656 patent) the claimed subject matter is drawn to an electro-mechanical lock. The patent is directed to an electronic combination lock is disclosed which allows access to a closed or secure location wherein the lock includes a locking mechanism for operating between a locked condition and an unlocked condition. The relevant claim language contained in the ˜656 patent which further contained in claims 34 and 43 as: . . . a movable link member for holding the lever out of engagement with the cam surface before entry of a combination and for releasing the lever after entry of the combination; . . . At issue was whether the claim limitations described in the "member for holding . . . for releasing" language invoked 35 U.S.C. 112, sixth paragraph. Imagine an examiner was presented this claim during examination. Should he allow the claim?* *A* Yes, allow this claim since it is essentially a read on in the findings rendered allowable by the Supreme Court Decision contained in KSR International Co. v. Teleflex Inc.. *B* No, reject the claim for an overly broad interpretation of a lever, and further cite the use of pedal contained in the Supreme Court Decision in KSR International Co. v. Teleflex Inc.. and an overly broad application of a lever as defined in this claim. *C* Yes, allow this claim since the use of a interchangeable lever is sufficiently different than the pedal apparatus recited in KSR v. Teleflex since this apparatus applies the use of a roller cam. *D* No, reject this claim using a finding that even though it does not directly invoke 35 USC 112 paragraph 6, it is sufficiently vague to be disallowable subject matter. *E* None of the above.

*B. R is selected from the group consisting of A, B, C, and D.* Explanation: (B) is the most correct answer. See MPEP § 2173.05(h). A Markush group is an acceptable form of alternative expression provided the introductory phrase "consisting of," and the conjunctive "and" are used. While the alternative "or" can be used, (A) and (D) are incorrect formats because the "or" is used in combination with "comprising" or "consisting of" to form an invalid Markush group. (C) and (D) are incorrect because the introductory phrase "comprising" is used. (E) is incorrect because R cannot simultaneously be A, B, C, and D. It must be only a single member of the group, i.e., no language provides for the selection of more than one member from the group.

*In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following presents the most proper format for a Markush group in accordance with proper PTO practice and procedure?* *A* R is selected from the group consisting of A, B, C or D. *B*R is selected from the group consisting of A, B, C, and D. *C*R is selected from the group comprising A, B, C, and D. *D*R is selected from the group comprising A, B, C or D. *E*R is A, B, C, and D.

*A. Allow the claim to pass since so dimensioned is sufficiently specific to pass the updated guidance defined under the revised 35 USC 112 Examination Guidelines.* Explanation: (A) The court found the claim language so dimensioned not indefinite under 112, ¶2. The court stated while [i]t is undisputed that the claims require that one desiring to build and use a travel chair must measure the space between the selected automobiles doorframe and its seat and then dimension the front legs of the travel chair so they will fit in that particular space in that particular automobile, witnesses skilled in the art testified that one of ordinary skill in the art would easily have been able to determine the appropriate dimensions. The court explained [t]he phrase ˜so dimensioned is as accurate as the subject matter permits, automobiles being of various sizes and that compliance with the definiteness requirement does not require that all possible lengths corresponding to the spaces in hundreds of different automobiles be listed so long as those of ordinary skill in the art realized that the dimensions could be easily obtained. See MPEP 2173.05(b).

*In the case of Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1 USPQ2d 1081 (Fed. Cir. 1986) the Office ruled on the following Representative Claim (U.S. Patent No. Re. 30,867): In a wheel chair having a seat portion, a front leg portion, and a rear wheel assembly, the improvement wherein said front leg portion is so dimensioned as to be insertable through the space between the doorframe of an automobile and one of the seats thereof whereby said front leg is placed in support relation to the automobile and will support the seat portion from the automobile in the course of subsequent movement of the wheel chair into the automobile, and the retractor means for assisting the attendant in retracting said rear wheel assembly upwardly independently of any change in the position of the front leg portion with respect to the seat portion while the front leg portion is supported on the automobile and to a position which clears the space beneath the rear end of the chair and permits the chair seat portion and retracted rear wheel assembly to be swung over and set upon said automobile seat. How should the examiner address this claim upon further detailed examination?* *A* Allow the claim to pass since so dimensioned is sufficiently specific to pass the updated guidance defined under the revised 35 USC 112 Examination Guidelines. *B* Reject the claim based on the language contained in since so dimensioned I sufficiently specific to pass the updated guidance deinked under the revised 35 USC 112 Examination Guidelines. *C* Suggest more precise language in a detailed response to the applicant to better define the meaning of so dimensioned. *D* Allow the applicant to whittle in the wind and number this as another proper rejection notch in their docket. *E* None of the above.

*C. Yes, allow the claim since it would be considered definite under 112 because the disclosure provides support for a corresponding structure and links it to the means.* Explanation: (C) The claim limitation invokes 112, therefore the next step in the analysis is to determine if the specification discloses the corresponding structure, material, or acts in accordance with 112. The specification only has to disclose sufficient structure to perform the function to the level of one of ordinary skill in the relevant art and clearly link or associate structure to the claimed function. The question is not whether one of skill in the art would be capable of implementing a structure to perform the function, but whether that person would understand the written description itself to disclose such a structure. The function of monitoring is disclosed as occurring continuously at each node to evaluate the integrity of the subrate signals. The specification states that controllers are associated with the nodes to generate error signals. Therefore one of ordinary skill in the art would appreciate that the controller must monitor the signal for errors. The corresponding structure for the function is thus the circuitry at a controller that determines if a defect exists with the multiplexed sub-rate communications. Therefore, despite the existence of black boxes in the drawings, controllers and their circuitry are the structure associated with the function of the monitoring means and one of ordinary artisan would understand the written description to clearly link or associate the controller with the claimed function. Therefore, the specification along with the figures shows sufficient structure to define the means-plus-function limitation to one of ordinary skill in the relevant art. The written description discloses sufficient structure to support the means for monitoring function and clearly links the corresponding structure to the means-plus-function limitation. Conclusion:: The claim is considered definite under 112 because the disclosure provides support for a corresponding structure and links it to the means for m lectors, which must monitor the incoming signals for errors; otherwise, the controller would be monitoring a claim limitation. The specification states the nodes have controllers and se not be able to insert error signals onto the subrate channels. Thus one of ordinary skill would appreciate that the monitoring function is clearly linked or associated with the controller, which is the corresponding structure.

*In the case of Telecordia Techs., Inc., v. Cisco Systems, Inc., 612 F.3d 1365 (Fed. Cir. 2010) U.S. Patent Nos. 4,835,763 (the '763 patent) The claimed subject matter is drawn to a communications network that is self-healing. The relevant claim language of independent claim 1 is as follows: . . . monitoring means, associated with the first ring and the second ring, for evaluating the integrity of the multiplexed subrate communications on the first ring and the second ring, respectively . . . The written description of the specification in addition to several black boxes in the drawings, discloses the following in support of the means-plus-function recitation of claim 1: Each node continuously monitors and evaluates the integrity of the multiplexed subrate signals arriving at the node. Illustratively, this could be accomplished by detecting the absence of a carrier signal in an analog signal environment, or the lack of any incoming signal in a digital environment. When node 1 recognizes major line fault 122 in ring 100, controller 118 inserts an error signal onto the six subrate channels. This could illustratively be accomplished by inserting a string of 1s on each channel in a digital environment. Node 4 performs the identical activity by similarly placing an error signal on the six subrate channels of ring 101. After these two relatively simple procedures take place, the ring network otherwise operates normally. 763 patent col. 3, ll. 4-17. Issue: Does the disclosure that each node has two controllers that monitor and evaluate the integrity of the signals arriving at the node support the means for monitoring means-plus-function limitation and link it to sufficient corresponding structure to satisfy the requirements of 112 ¶ 6 and avoid an indefiniteness rejection?* *A* No, reject the claim for claiming an analog basis for what is only available in the digital domain in oversampling digital domain applications employed in subrate communication co-channels *B* No, reject the claim since claim since the cited claim language would be considered to sufficiently address the the absence of a carrier signal in an analog signal environment, which is not best addressed by using oversampling technology only available in the digital domain. *C* Yes, allow the claim since it would be considered definite under 112 because the disclosure provides support for a corresponding structure and links it to the means. *D* Yes, allow the claim since the cited claim language would be considered to sufficiently address the the absence of a carrier signal in an analog signal environment, which is not possible in subrate digital domain. *E* No, based on the more broadly defined violation of sufficient compliance described in MPEP 2107.01(IV).

A. Claim 2.

*Independent claim 1, fully supported by the specification in a patent application states:Claim 1. An apparatus comprising: a plastic valve; a copper pipe connected to the plastic valve; and an aluminum pipe connected to the plastic valve. Which of the following claims, presented in the application, provide the basis for a proper rejection under 35 USC 112, second paragraph? Claim 2. The apparatus of claim 1, wherein said pipe is statically charged. Claim 3. The apparatus of claim 1, wherein the outer circumference of said copper pipe is statically charged. Claim 4. The apparatus of claim 1, further comprising a thermostat connected to said plastic valve.* *A* Claim 2. *B* Claim 3. *C* Claim 4. *D* Claims 2 and 3. *E* Claims 3 and 4

*D. The claims should be considered invalid under 112 ¶1 because they do not comply with the written description requirement. The claimant failed to show sufficient possession of said invention.* Explanation: Background: The 775 patent discloses pharmaceutical antibodies used to treat arthritis. Specifically the 775 patent discloses technology involving antibodies to human tumor necrosis factor α (TNF-α). Overproduction of TNF-α can lead to various autoimmune conditions, including arthritis. Although TNF-α antibodies have the potential to reduce the harmful activity caused by excess TNF-α, the human body does not typically make antibodies to human TNF-α. The 775 patent discloses mouse-human chimeric antibodies to human TNF-α. The chimeric antibody consists of a mouse variable region and a human constant region. The chimeric antibody is needed because human patients frequently have immunological reactions when treated with antibodies produced in mice or other non-human species. The human immune system recognizes foreign proteins as such and attacks them. By engineering a chimeric antibody, it looks more human, and tricks the human immune system to prevent this undesirable immune response. Given these therapeutic limitations of the known TNF-α antibodies, the 775 patents chimeric anti- TNF-α antibody is disclosed as having (1) high affinity, (2) neutralizing activity, (3) binding at a specific epitope on human TNF-α, and (4) reduced immunogenicity. The scope of claim 1 includes both chimeric and human antibodies, whereas claim 2 is limited to human antibodies. Issue: Does the disclosure of a human-mouse chimeric antibody characterized by specific results obtained support a claim to a human antibody with the same specific results obtained? Analysis: The court analyzed whether or not the disclosure of the 775 patent provides adequate written description for the claimed human antibody. Claim 2 sets forth that a fully-human antibody possesses the same results-obtained properties as the disclosed chimeric antibody, i.e., high affinity, neutralizing activity and binding at a specific epitope. The court held that the 775 patent provided little support for a high affinity, neutralizing, TNF-α specific antibody that is purely human. Instead, the court found that the overwhelming majority of the 775 patent only described a mouse antibody and a single chimeric antibody with the claimed results-obtained properties. The court further explained that while the specification discloses the sequence to the human TNF-α protein, possession of the protein alone does not demonstrate possession of the claimed antibodies. In some cases, the written description for certain antibody claims may be satisfied by disclosing a well-characterized antigen. This reasoning applies to the disclosure of newly characterized antigens where creation of the claimed antibodies is routine. In this case, human TNF-α protein and antibodies to TNF-α were known. However, at the time the application leading to the 775 patent was filed, it was not possible to create the claimed fully-human antibodies with the results-obtained properties using known, contemporaneous, conventional technology. Therefore, the specification failed to adequately describe the fully-human antibodies with the claimed results-obtained properties to one of ordinary skill in the art given the state of the art at the time of filing. The court concluded that the claims to fully-human antibodies merely recite a description of the problem to be solved while claiming all solutions to it. Thus, the broad, results-obtained claiming of a class of purely human antibodies is not supported by the specification because it does not describe a single human antibody that satisfies the claim limitations. The 775 patent did not show constructive possession of the claimed invention and thus the written description requirement of 112 ¶1 was not satisfied. ANSWER: (D) The claims are invalid under 112 ¶1 because they do not comply with the written description requirement.

In the case of Centocor Ortho Biotech, Inc. vs. Abbott Labs., ___ F. 3d ____, 2011 U.S. App. LEXIS 3514; 97 USPQ2d 1870 (Fed. Cir. 2011) the following Representative Claims (U.S. Patent No. 7,070,775 (the 775 patent) were ruled on by the Federal Circuit court: 1. An isolated recombinant anti-TNF-α antibody or antigen-binding fragment thereof, said antibody or antigen-binding fragment comprising a human constant region, wherein said antibody or antigen binding fragment (i) competitively inhibits binding of A2 (ATCC Accession No. PTA-7045) to human TNF-α, and (ii) binds to a neutralizing epitope of human TNF-α in vivo with an affinity of at least 1x108 liter/mole, measured as an association constant (Ka), as determined by Scatchard analysis. 2. The antibody or antigen-binding fragment of claim 1, wherein the antibody or antigen-binding fragment comprises a human constant region and a human variable region. How should have the examiner addressed both claims in their examination? *A* The claim(s) should be rejected since the claimant is a well-known non-practicing entity (NPE) i.e. a patent troll. *B* The claim should be accepted under the broadest reading of 112 ¶1 since the treatment of variant epitopes are widely considered sufficiently unpredictable in the filed of the medical arts. *C* Allow the claim since there is since the treatment of variant epitopes are widely considered to be somewhat unpredictable in the filed of the medical arts. *D* The claims should be considered invalid under 112 ¶1 because they do not comply with the written description requirement. The claimant failed to show sufficient possession of said invention. *E* Go home and read more epidemiology textbooks and come back when better prepared to take this exam.

*D. The foreign patent or inventors certificate must be actually granted and published before the U.S. filing date.* Explanation: (D) is the most correct answer. As set forth in MPEP 2135, under the heading "General Requirements of 35 U.S.C. 102(d)," states "(C) The foreign patent or inventors certificate must be actually granted (e.g., by sealing of the papers in Great Britain) before the U.S. filing date. It need not be published." Answer (A) is incorrect because it is one of the four conditions established by 35 U.S.C. 102(d). MPEP 2135, under the heading" General Requirements of 35 U.S.C. 102(d)," states "(A) The foreign application must be filed more than 12 months before the effective U.S. filing date¦." Answer (B) is incorrect because it is one of the four conditions established by 35 U.S.C. 102(d). MPEP 2135, under the heading "General Requirements of 35 U.S.C. 102(d)," states "(B) The foreign application must have been filed by the same applicant as in the United States or by his or her legal representatives or assigns." Answer (C) is incorrect because it is one of the four conditions established by 35 U.S.C. 102(d). MPEP 2135, under the heading "General Requirements of35 U.S.C. 102(d)," states "(C) The foreign patent or inventors certificate must be actually granted (e.g., by sealing of the papers in Great Britain) before the U.S. filing date. It need not be published." Answer (E) is incorrect because it is one of the four conditions established by 35U.S.C. 102(d). MPEP 2135, under the heading "General Requirement of 35 U.S.C. 102(d)"states "(D) The same invention must be involved." See also MPEP 2135.01(IV).

*35 USC 102(d) establishes four conditions which, if all are present, establish a bar against the granting of a patent in this country. In accordance with the patent laws, rules and procedures as related in the MPEP, which of the following is not one of the four conditions established by 35 USC 102(d)?* *A* The foreign application must be filed more than 12 months before the effective U.S. filing date. *B* The foreign application must have been filed by the same applicant as in the United States or by his or her legal representatives or assignee. *C* The foreign patent or inventors certificate must be actually granted before the U.S. filing date. *D* The foreign patent or inventors certificate must be actually granted and published before the U.S. filing date. *E* The same invention must be involved.

*B. The document may cite the document as prior art, but Scientist will be able to overcome it if he can show that the document came from his own work.* Explanation: See 35 USC 102(b)(1). While the publication is prior art, Scientist can demonstrate it was about his own work by filing a 1.130 affidavit. MPEP 2155.

*A Scientist files a patent application on April 3, 2013. The examiner cites a technical document that was published on April 2, 2013 by someone other than Scientist. The technical document describes work that Scientist performed in September 2012. What is the outcome?* *A* Technical documents are not considered publication prior art. *B* The document may cite the document as prior art, but Scientist will be able to overcome it if he can show that the document came from his own work. *C* The document is not considered prior art as it was published <1 year from Scientist's filing. *D* The document is considered prior art and will bar Scientist from obtaining a patent. *E* None of the above.

*D. Neither the Kim nor Lance references teaches or suggests the ambiguous claimed limitation that the examiner separately rejected as indefinite.* Explanation: This question is from an actual exam, but because of ambiguity and no clear correct answer, all answers were accepted. (1) Wrong because determining ordinary level of skill is not always required. See MPEP 2141.03: If the only facts of record pertaining to the level of skill in the art are found within the prior art of record, the court has held that an invention may be held to have been obvious without a specific finding of a particular level of skill where the prior art itself reflects an appropriate level. Chore-Time Equipment, Inc. v. Cumberland Corp., 713 F.2d 774, 218 USPQ 673 (Fed. Cir. 1983). See also Okajima v. Bourdeau, 261 F.3d 1350, 1355, 59 USPQ2d 1795, 1797 (Fed. Cir. 2001). (2) and (3): Wrong because MPEP 2141.01(a): Rather, a reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). See Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212. For (4): This one is a bit ambiguous and so not clearly correct, so the PTO accepted all answers as correct. If you had to choose the best answer, it would probably be (4). It might be correct because MPEP 2143.03: A claim limitation which is considered indefinite cannot be disregarded. If a claim is subject to more than one interpretation, at least one of which would render the claim unpatentable over the prior art, the examiner should reject the claim as indefinite under 35 USC 112(b) or pre-AIA 35 USC 112, second paragraph (see MPEP 706.03(d)) and should reject the claim over the prior art based on the interpretation of the claim that renders the prior art applicable. However, (4) might also be incorrect because, even if individual references do not separately teach a limitation, the combined references might teach the limitation.

*A claim in a pending patent application stands rejected under 35 USC 103(a) as being obvious over Kim in view of Lance. The Kim and Lance references are both U.S. Patents issued on respective applications filed before the date of the application in question. In the rejection, the primary examiner asserted that no determination of the level of ordinary skill in the art was necessary because the subject matter of the application and of Kim and Lance were so easily understandable; and that the Kim reference relates to the applicants endeavor. The examiner properly found motive in Kim and Lance for combining the references, but the motive would produce a benefit different from that offered by applicants invention. Neither reference teaches or suggests the ambiguous limitation. In the rejection under 35 USC 103(a), the examiner did not address an ambiguous limitation in the claim. However, the examiner separately rejected under 35 USC 112, second paragraph as indefinite due to the ambiguity. According to the patent laws, rules and procedures as related in the MPEP, which of the following arguments, if true, would overcome the rejection?* *A* The examiner asserted that because the subject matter of the application and of Kim and Lance were so easily understandable, a factual determination of the level of skill in the art was unnecessary. *B* The Kim reference is nonanalogous art because, although it relates to the field of the applicants endeavor, it is not pertinent to the particular problem with which the applicant was concerned. *C* The reason given by the examiner to combine Kim and Lance is to obtain a benefit different from that offered by the applicants invention. *D* Neither the Kim nor Lance references teaches or suggests the ambiguous claimed limitation that the examiner separately rejected as indefinite. *E* All of the above.

* A. There is no anticipation unless each of the process steps recited in the claim is disclosed or inherent in the applied reference.* Explanation: (A) is the most correct answer. The patentability of a product-by-process claim is determined based on the product itself, not on the process of making it. See In re Thorpe, 777F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985), and MPEP 2113. (B) and (D) are not proper choices because when evidence indicates that the applicants product and that of the prior art are identical or substantially identical, the burden shifts to the applicant to overcome the rejection by providing evidence that the prior art product does not necessarily or inherently possess a relied-upon characteristic of the applicants claimed product. See In re Fitzgerald, 619F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980); In re Best, 562 F.2d 1252, 1255, 195 USPQ 430,433-34 (CCPA 1977), and MPEP 2112. (C) is not the proper choice because evidence of unexpected results is not relevant to anticipation. See In re Malagari, 499 F.2d 1297, 1302, 182USPQ 549, 553 (CCPA 1974), and MPEP 711.03(c). (E) is not the proper choice because are rejection under 35 U.S.C. 102(b) is a statutory bar to patentability, and 37 C.F.R. 1.131(a)(2) states that 131 cannot be used to establish prior invention when the rejection is based upon a statutory bar.

*A product-by-process claim is properly rejected over a reference under 35 U.S.C. 102(b). Which of the following statements is incorrect?* *A* There is no anticipation unless each of the process steps recited in the claim is disclosed or inherent in the applied reference. *B* If the applied reference reasonably indicates that a product disclosed therein is the same or substantially the same as the claimed product, the burden shifts to the applicant to provide evidence to the contrary. *C* The rejection cannot be overcome by evidence of unexpected results. *D* The rejection can be overcome by evidence that the product in the reference does not necessarily or inherently possess a characteristic of the applicants claimed product. *E* An affidavit or declaration under 37 CFR 1.131 cannot overcome a proper rejection under 35 U.S.C. 102(b) over a reference.

*C. No, the examiner should allow the claim since it does not employ so-called means for (a.k.a. means plus function) claim language.* Explanation: The claim limitation does not use means for language to invoke 35 U.S.C. 112, sixth paragraph. The non-structural term member is used, and preceded by a non-structural intended use modifier eyeglass hanger. The non-structural claim term member is subsequently modified by several structural language limitations. The claim term eyeglass hanging member is claimed, inter alia, as having an upper edge, a lower edge and a width dimension. These multiple claim recitations that impart structure onto the claim term eyeglass hanger member remove the limitation from 35 U.S.C. 112, sixth paragraph.Conclusion: 35 U.S.C. 112, sixth paragraph is not invoked. The above analysis is in accordance with MPEP 2181, and further in view of the analytical framework of the 2011 Supplementary Guidelines to determine whether a limitation invokes 35 U.S.C. 112, sixth paragraph.

*Al-Site Corp., v. VSI Intl, Inc., 174 F.3d 1308 (Fed. Cir. 1999) regarded U.S. Patent Nos. 5,144,345 (the 345 patent) & 5,260,726 (the 726 patent) . The claimed subject matter relates to retail displays for eyeglasses. Claim 1 of the 345 patent and claim 1 of the 726 patent both set forth the following relevant claim language: an eyeglass hanger member for mounting a pair of eyeglasses . . .; said eyeglass hanger member made from flat sheet material and having an upper edge, a lower edge and a width dimension, the width dimension of said hanger member being greater than the width of the bridge; . . . Does the claim limitation eyeglass hanger member invoke 35 U.S.C. 112, sixth paragraph?* *A* Yes, the claim employs language that can be construed as requiring the presumption that 35 USC 112 sixth paragraph is invoked. *B* Yes, the examiner should reject the claim for using overly broad claim language and put the practitioner on notice for being subject to a second and possible, final rejection. *C* No, the examiner should allow the claim since it does not employ so-called means for (a.k.a. means plus function) claim language. *D* (A) and (B) *E* None of the above.

*C. The examiner should maintain the rejection as the claim in broad enough to be anticipated* Explanation: The language of the claim is open-ended ("¦comprising wings covered in aluminum foil") with no limitations. Thus, the prior art anticipates the claim.

*An applicant, Joe, submits a patent application claiming a toy plane comprising wings covered in aluminum foil. The specification of the application describes a toy plane that has wings covered in foil, but the body of the plane is not covered. A related reference discloses a plane that is covered entirely in chewing gum wrapper, which includes aluminum foil and another material. Joe's claim is rejected, and he responds by arguing that the use of foil on the wings provides beneficial aerodynamic properties, and therefore the claimed invention is distinguishable from the cited reference. What should the examiner do?* *A*The examiner should allow the claim *B*The examiner should allow the claim only after including a Reasons for Allowance pointing out that the inventor argues that his invention is directed to using aluminum foil, not chewing gum wrappers *C*The examiner should maintain the rejection as the claim in broad enough to be anticipated *D*The examiner should withdraw the rejection *E*none of the above

*D. Absent a suggestion or motivation, the examiner has not shown that combining Larrys with Morriss device would have been within the level of ordinary skill of the art.* Explanation: (D) is correct. "The mere fact that references can be combined or modified does not render the resultant combination obvious unless the prior art also suggests the desirability of the combination." MPEP 2143.01 (citing In re Mills, 916 F.2d 680, 16 USPQ2d1430 (Fed. Cir. 1990)). Here, the examiner fails to show that substituting Larrys device for another type of device in Morris would have been desirable. (A) is incorrect. The test of obviousness is not whether the features or elements of the references are physically combinable. In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981); In re Sneed, 710 F.2d1544,1550, 218 USPQ 385,389 (Fed. Cir. 1983). (B) is incorrect. "The rationale to modify or combine the prior art does not have to be expressly stated in the prior art; the rationale may be expressly or impliedly contained in the prior art or it may be reasoned from knowledge generally available to one of ordinary skill in the art, established scientific principles, or legal precedent established by prior case law." MPEP 2144 (citing In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988); In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992)). Here, the argument overlooks the fact that a suggestion to combine Larry and Morris may be reasoned from knowledge generally available to one of ordinary skill in the art, established scientific principles, or legal precedent established by prior case law. (C) is incorrect. "The fact that a combination would not be made by businessmen for economic reasons does not mean that a person of ordinary skill in the art would not make the combination because of some technological incompatibility." MPEP 2145 (citing In re Farrenkopf, 713 F.2d 714, 718, 219USPQ 1, 4 (Fed. Cir. 1983)). Here, the high cost of Barrys device does not teach away from a person of ordinary skill in the art combining it with Lances device.

*An applicants claim stands rejected under 35 USC 103 as being obvious over Larry in view of Morris. Larry and Morris are references published more than one year before applicants effective filing. Although the examiner cites no suggestion or motivation for combining the references, they are, in fact, combinable. Which of the following arguments could properly show that the claim is not obvious?* *A* The inventions disclosed by Larry and Morris cannot be physically combined. *B* Neither Larry nor Morris provides an express suggestion to combine the references. *C* As recognized by businessmen, the high cost of Larrys device teaches away from combining it with the simpler device of Morris. *D* Absent a suggestion or motivation, the examiner has not shown that combining Larrys with Morriss device would have been within the level of ordinary skill of the art. *E* None of the above.

*B. Applicant amends claim 1 of the originally filed application by adding a limitation that was written in the original disclosure of the application, but the original disclosure does not enable one of ordinary skill in the art to make or use the invention as claimed in amended claim 1.* Explanation: The most correct answer is (B). MPEP 2163.01. (A) is incorrect because the claims as filed in the original application are part of the disclosure, MPEP 2163.03 and2163.06(III), and claim 2 is enabled by the original disclosure. (C) is incorrect. The original disclosure enables claim 2. (D) is incorrect because although the specification should be objected to, the original disclosure enables each of the claims. MPEP 2163.06(I). (E) is incorrect because (B) is correct.

*An application includes independent claims 1 and 2. Which of the following, in a reply to a non-final Office action, provides the proper basis for a rejection under 35 USC 112, first paragraph?* *A* Applicant amends claim 2 of the originally filed application by adding a limitation which was previously written only in claim 1 of the originally filed application, and one of ordinary skill in the art is enabled by the original disclosure to make and use the invention as claimed in amended claim 2. *B* Applicant amends claim 1 of the originally filed application by adding a limitation that was written in the original disclosure of the application, but the original disclosure does not enable one of ordinary skill in the art to make or use the invention as claimed in amended claim 1. *C* Applicant amends and broadens claim 2 by removing a limitation which was written in the original disclosure of the application, and one of ordinary skill in the art is enabled by the original disclosure to make and use the invention as claimed in amended claim 2. *D* Applicant adds new matter to the disclosure, but does not amend the claims of the originally filed application, and one of ordinary skill in the art is enabled by the original disclosure to make and use the invention as described in each of the claims. *E* None of the above.

*E. All of the above* Explanation: (E) is the most correct answer. For (A) see, "Utility Examination Guidelines,"66 F.R. 1092, 1099, left column (Jan. 5, 2001). "The applicant can do this by¦ providing reasoning or arguments¦ ." For (B), see, "Utility Examination Guidelines," 66 F.R. 1092, 1099, left column (Jan. 5, 2001). "The applicant can do this by amending the claims¦ ." For (C) see, "Utility Examination Guidelines," 66 F.R. 1092, 1099, left column (Jan. 5, 2001). "The applicant can do this by¦providing evidence in the form of a declaration under 37 C.F.R. 1.132¦rebutting the basis or logic of the prima facie showing." For (D), see, "Utility Examination Guidelines," 66 F.R. 1092, 1099, left column (Jan. 5, 2001). "The applicant can do this by¦providing evidence in the form of a¦printed publication¦rebutting the basis or logic of the prima facie showing." (A), (B), (C), and (D) alone are not the most correct answer inasmuch (E), referencing all of the above, is the most correct answer.

*An examiner has properly established a prima facie showing of no specific and substantial credible utility for the claimed invention in a patent application filed in February 2001. An applicant can sustain the burden of rebutting and overcoming the showing by:* *A*Providing reasoning or arguments rebutting the basis or logic of the prima facie showing. *B*Amending the claims. *C*Providing evidence in the form of a declaration under 37 CFR 1.132 rebutting the basis or logic of the prima facie showing. *D*Providing evidence in the form of a printed publication rebutting the basis or logic of the prima facie showing. *E*All of the above.

*E. Accept, and allow the clam.* Explanation: YES -it is an article (a non-transitory storage medium) produced from raw or prepared materials. Does it recite a judicial exception? "YES -it recites a mathematical algorithm. Is it directed to a practical application? YES -evidenced by the tangible embodiment of the computer-readable storage medium. [based on USPTO PPT internal training matl covering subject matter treatment under 102]

*An examiner in the computer technology department encounters the following claim: A non-transitory computer-readable storage medium with an executable program stored thereon, wherein the program instructs a microprocessor to perform the following steps: "sorting results of a search into groups based on a first characteristic; "ranking the results based on a second characteristic using a mathematical formula [f]; and "comparing the ranked results to a predetermined list of desired results to evaluate the success of the search. How should the examiner treat this claim? Is the claim directed to an apparatus of manufacture and / or is the claim directed to substantially all practical applications of the mathematical algorithm?* *A* Reject the claim, since computer readable media are considered transitory, there is no need to continue to the second prong of a traditional machine or transformation test for subject matter eligibility. *B* Reject, the claim even though the claim explicitly claims a non-transitory storage medium, it would fail the second prong of the machine or transformation test due to the inherent algorithmic nature of the claim, It is an attempt to circumvent the gist of the law in order to obtain patent rights on what is essentially a method of sorting and storing data on a virtual drive, be it a hard drive or on the cloud as further defined in dependent claim(s) 10-12. *C* Reject the claim, since it is not directed to a real apparatus, but it is a real effort to perform a machine or transformation exacted by writing the output to a dedicated hard drive, be it a local drive or on the cloud as defined in dependent claim(s) 10-12. *D* Reject the claim, while it passes the machine or transformation test and incorporates elements of incorporating real devices, in our case the microprocessor, it fails to further incorporate a true transformation of said data which is just the output of a machine translation. *E* Accept, and allow the clam.

*B. Tuesday, November 28, 2000.* Explanation: See MPEP § 201.04(b), which states "[t]he [Uruguay Agreement Round Act] provides a mechanism to enable domestic applicants to quickly and inexpensively file provisional applications. A provisional application is filed under 35 U.S.C. § 119(e) and according to 35U.S.C. § 154(a)(3), such a filing date is not taken into account in determining patent term. Therefore, (A) is incorrect. The fact pattern states that (1) benefit was properly claimed in the international application to both the provisional application and the national application and (2) the national stage application filed under 35 U.S.C. § 371 claimed benefit to the filing date of the nonprovisional application under 35 U.S.C. § 120. According to 35 U.S.C. § 154(a)(2), where an application contains a reference to an earlier filed application or applications under 35 U.S.C.§ 120, 121, or 365(c), the patent term ends 20 years from the date on which the earliest such application was filed; in this fact pattern that date would be (B), the filing date of the nonprovisional application. The filing date of the international application, (C), is not correct in view of 35 U.S.C. § 154(a)(2) since the international application claimed the benefit under 35 U.S.C. § 120 to the filing date of the nonprovisional application. If the international application did not claim priority to an earlier nonprovisional application, the term would then be calculated as 20 years from the filing date of the international application, not the later national-stage entry. The date of commencement of the national stage in the United States, (D), is not correct, since the date of commencement of the national stage in the U.S. is not relevant in the determination of the patent term of a patent issuing form the national stage of the international application. Finally, the issue date, (E), is not correct. According to 35 U.S.C. § 154(c), applications filed on or after June 8, 1995, the term of a patent begins on the date the patent issues and ends on the date that is twenty years from the date on which the application for the patent was filed in the United States or, of the application contains a specific reference to an earlier filed application or applications under 35 U.S.C. § 120, 121, or 365(c), twenty years from the filing date of the earliest of such application(s).

*Applicant filed a provisional patent application in the USPTO under 35 USC 111(b) on Tuesday, November 30, 1999. On Tuesday, November 28, 2000, applicant filed a nonprovisional application in the USPTO under 35 USC 111(a) that properly claimed priority under 35 USC 119(e) to the filing date of the provisional application. On Wednesday, November 29, 2000, applicant filed an international application for patent in the USPTO under the Patent Cooperation Treaty that designated the United States and properly claimed priority to both the provisional and the nonprovisional applications. On Friday, July 28, 2001, applicant filed a national stage application in the USPTO under 35 USC 371, providing all of the requirements under 35 USC 371 and properly claiming benefit to the filing date of the provisional application under 35 USC 119(e) and the nonprovisional application under 35USC 120. The national stage application was published on Tuesday, January 30, 2002 and issued as a patent on Tuesday, February 4, 2003. Assuming no patent term extension or adjustment, the patent term ends on the date that is 20 years from which of the following dates in accordance with the patent laws, rules and procedures as related in the MPEP?* *A*Tuesday, November 30, 1999 *B*Tuesday, November 28, 2000 *C*Wednesday, November 29, 2000 *D*Friday, July 28, 2001 *E*Tuesday, February 4, 2003

*B. February 27, 1997* Explanation: (B) is the most correct answer. 35 U.S.C. 102(e)(1) provides that a USPTO published application, based on an earlier international application, has prior art effect as of its international filing date, if the international application designated the United States, and was published in English. Because in the above fact pattern, the international application designated the United States and was published in English, the USPTO published application is entitled to its international filing date of February 27, 1997 for prior art purposes. (A) is wrong because the Japanese filing date is relevant under 35 U.S.C. 119 only for priority, but not for prior art purposes. (C) and (E) are wrong because they recite prior art dates that are later than February27, 1997. (D) is wrong because the amendments to 102(e) by the American Inventors Protection Act of 1999 make the national stage entry date irrelevant for prior art purposes.

*Applicant files a patent application in Japan on February 28, 1996. Applicant files a PCT international application designating the United States on February 27, 1997, based on the Japanese application. The international application is published in English on August28, 1997. The international application enters the national stage in the United States on August 28, 1998. The USPTO publishes the application on June 7, 2001 at the request of the applicant. The application issues as a United States patent on December 4, 2001.When examining an application filed on or after November 29, 2000 or any application that has been voluntarily published, what is its earliest possible prior art date, for the June 7th U.S. published application in view of 35 U.S.C. 102(e) as amended by the American Inventors Protection Act of 1999?* *A* February 28, 1996 *B* February 27, 1997 *C* August 28, 1997 *D* August 28, 1998 *E* June 7, 2001

*D. A Japanese patent application published on September 1, 2000.* Explanation: (D) is the most correct answer. A reference is a "printed publication" if one of ordinary skill in the art can locate it with reasonable diligence. Its availability as prior art under 102(b) depends upon proof of when the reference was "published" or became publicly accessible. Here, (D) is the correct answer because the Japanese patent application was published, i.e., "laid open," more than 1 year before applicants filing date. (C) is incorrect because it was posted or published less than one year after applicants filing date. (B) is incorrect because (1) the database retrieval date is after applicants filing date, (2) the printout does not include the date on which the MEDLINE abstract was publicly posted and (3) reliance is on the printout per se not the actual article (reliance on the actual article would require getting the article and an English translation as well as determining the date when the journal was publicly available). (A) is incorrect because there is no evidence when the journal was publicly available. The examiner was unable to determine the actual date of publication.(E) is incorrect because (A), (B) and (C) are incorrect.

*Applicant files an application claiming a nutritional supplement comprising ingredients (1) through (9) on September 6, 2001. The examiners search on November 12, 2001 retrieved several documents, each of which provides an enabling disclosure of a nutritional supplement comprising ingredients (1) through (9). Which of the following documents retrieved by the examiner may be properly used by the examiner to reject applicants claims under 35 USC 102(b)?* *A* An advertisement in the September 2000 issue of Dieticians and Nutritionists Health Weekly where the examiner is not able to determine the actual date of publication. *B* A printout on November 12, 2001 by the examiner of a MEDLINE database abstract 123456 of an article by Food et al., "Nutritional supplements for infants," published in Azerbijan Pediatrics, Vol. 33, No. 8, pp. 33-37 (September 2000). The printout does not include the date on which the MEDLINE abstract was publicly posted. *C* A printout, on November 12, 2001 by the examiner, of a product brochure from the Internet website of PRO-BIOTICS VITAMIN CORP. The examiner determines that the brochure was posted on September 7, 2000 on the website. *D* A Japanese patent application published on September 1, 2000. *E* All of the above.

*B. It is the earlier of: (i) the actual filing date of a nonprovisional application; or (ii) the date to which the nonprovisional application claims domestic benefit or foreign priority of another application that describes the subject matter.* Explanation: 35 USC 100(i) provides the definition of "effective filing date" under the AIA.

*As referred to in the new section 35 U.S.C. 102 introduced by the AIA, what is the "effective filing date" of a claimed invention?* *A* It is the later of: (i) the actual filing date of a nonprovisional application; or (ii) the date to which the nonprovisional application claims domestic benefit or foreign priority of another application that describes the subject matter. *B* It is the earlier of: (i) the actual filing date of a nonprovisional application; or (ii) the date to which the nonprovisional application claims domestic benefit or foreign priority of another application that describes the subject matter. *C* It is the later of: (i) the actual filing date of a nonprovisional application; or (ii) the date to which the provisional application claims domestic benefit or foreign priority of another application that describes the subject matter. *D* It is the earlier of: (i) the actual filing date of a nonprovisional application; or (ii) the date to which the provisional application claims domestic benefit or foreign priority of another application that describes the subject matter. *E* None of the above.

*B. Reject the claim for lack of enablement based on the ambiguous boundary ranges in the claims.* Explanation: (B) See MPEP 2173; AK STEEL v. SOLLAC, Fed. Cir. 2003. The court interpreted the asserted independent claims as reading on steel strips containing either a Type 1 or a Type 2 aluminum coating. This is because the asserted independent claims do not contain any express limitations regarding the amount of silicon in the aluminum coating, while the corresponding dependent claims specify the further limitation that the aluminum coating contain up to about 10% silicon (i.e., Type 1 silicon). The court also interpreted the claims as requiring that the coating wet well. The court stated that [t]he specification undoubtedly enables the invention [with Type 2 aluminum], as it clearly describes how to make and use such strips with Type 2 aluminum, and there is no question that the resulting strips are well-wetted. However, the court concluded that the specification is inadequate to enable making and using a steel strip containing a Type 1 aluminum coating with the claimed wetting attributes, primarily because [the specification] expressly teaches against it. The court stated that [w]orse than being silent as to that aspect of the invention, the specification clearly and strongly warns that such an embodiment would not wet well and, in particular, that silicon content above 0.5% in the aluminum coating causes coating problems. The court stated, Such a statement discourages experimentation with coatings having more than 0.5% silicon, undue or otherwise. It tells the public that higher amounts of silicon will not work. The court further explained that the specifications teaching is itself evidence that at least a significant amount of experimentation would have been necessary to practice the claimed invention utilizing Type 1 aluminum, and concluded that the specification does not enable a significant portion of the subject matter encompassed by the contested claims of the 549 patent. Conclusion: The court held the asserted claims invalid for non-compliance with the enablement requirement of 112. (A) While the application may be granted "special status" based on its energy conservation uses, MPEP 708.02, that does not mean it does not need to follow the rules of patentability. (D) is also incorrect for this reason, and also because nowhere does it mention national security considerations for the invention. (C) is wrong since it is the opposite of the correct answer.

*Background: U.S. Patent No. 5,066,549 patent claims are directed to hot-dip aluminum-coated stainless steel. The coated steel strips are essential for further development of energy saving devices. Hot-dip aluminum-coated steel is produced by passing heated steel strips through molten aluminum; however, it is challenging to get the aluminum to adhere or wet well onto the steel and that the inventors of the patents in suit solved the wetting problem by maintaining the steel strip in a hydrogen atmosphere prior to entry into the aluminum coating bath. The specification includes statements regarding the amount of silicon in the aluminum coating with respect to the coating metals ability to wet well and, as the court explained, the specification states that Type 1 aluminum containing about 10% silicon contains too much silicon and does not achieve that goal but Type 2 or nearly pure aluminum does and is therefore preferred. The '549 patent issued from a continuation application, which sought and issued with broader claims than its parent patent. The '549 patent has the following representative claims: 1. A ferrous base ferritic strip continuously hot dip coated with a coating metal, comprising: the strip including at least about 6% by weight chromium, the coating metal including aluminum or aluminum alloys, the coating layer on the strip being substantially free of uncoated areas and formed without a thick brittle Fe-Al alloy inner layer, the coating layer being tightly adherent to the strip and resistant to crazing or flaking during bending. 3. The strip of claim 1 wherein the aluminum coating metal contains up to about 10% by weight silicon. How should have the examiner address these claims in their initial review of said patent?* *A* Allow the claim since the need for the coated steel strips regards energy conservation. *B* Reject the claim for lack of enablement based on the ambiguous boundary ranges in the claims. *C* Not reject the claims based on ambiguous numerical boundary ranges. *D* Allow the claim since the use of the coated steel strips is probably essential to national security as defined by provisions contain the Patriot Act as essential tools necessary to combat potential terrorists. *E* None of the above.

*E. No. Follow the two-pronged analysis and re-read the limitations contained in said claim to fine it indefinite. The claim should be considered indefinite under 112 ¶ 2 because the disclosure only provides a statement that known techniques or methods can be used to achieve the claimed function and does not disclose the necessary corresponding structure.* Explanation: The claim limitation invokes 112 ¶ 6, therefore the next step in the analysis is to determine if the specification discloses the corresponding structure, material, or acts in accordance with 112 ¶ 6. The only reference in the specification to support the means-plus-function limitation is a box labeled Control in Figure 6 and a statement that the regeneration process of the invention may be controlled automatically by known differential pressure, valving and control equipment. Therefore, by disclosing only that unspecified equipment may be used to control the valves, no corresponding structure capable of performing that function is disclosed. The inquiry is not whether one of skill in the art would be capable of implementing a structure, but whether or not one of ordinary skill in the art would understand that the specification discloses the corresponding structure. The bare statement that known techniques or methods can be used is not a disclosure of structure. The fact that one of ordinary skill in the art could envision various types of equipment capable of automatically operating valves does not change the fact that the disclosure provides nothing to suggest a structure for the claimed control means. Accordingly, the failure to disclose a structure corresponding to the control means for performing the recited function renders the claim indefinite. Conclusion: The claim should be considered indefinite under 112 ¶ 2 because the disclosure only provides a statement that known techniques or methods can be used to achieve the claimed function and does not disclose the necessary corresponding structure. See MPEP 2181 II 8th Ed. Rev. 6., Sept 2007 Pages 2100-238 for further guidance.

*In Biomedino, LLC, v. Waters Tech. Corp., 490 F.3d 946 (Fed. Cir. 2007) filed as U.S. Pat. No. 6,602,502 (the 502 patent) The claimed subject matter is drawn to a method and apparatus for medical testing. The relevant claim language is set forth in claim 40 as follows: A closed regeneration device . . . comprising . . . for separating a molecule . . . a first valve selectively connecting said first reagent in fluid communication with said molecule bound . . . a second reagent, a second valve selectively connecting said second reagent in fluid communication with . . . to return said binding species to a regenerated condition, and control means for automatically operating valves. The written description of the specification supports this means-plus-function recitation with the following disclosure which when describing Figure 6 of the 502 patent states, The entire process of regenerating the antibody may be controlled automatically by known differential pressure, valving and control equipment. 502 patent, col.11 ll.55-58. Figure 6 depicts a box labeled Control. Does the depiction of a box labeled control in combination with the disclosure that the claimed control means may be controlled automatically by known differential pressure, valving and control equipment satisfy the corresponding structure, material or acts requirement of 112, ¶ 6 to avoid an indefiniteness rejection?* *A* Yes, reject the claim for reciting a simple improvement that as being essentially previously contained in the differential pressure adapter for an automatic cycle (well) control previously described in US 3266574 A. *B* No, accept the claim since the use of a differential pressure adapter previously described in US Patent 3266574 A did not contain a sufficient description of an automated cycle control mechanism to invoke 35 USC 112, ¶ 6 limitations. *C* Yes, allow the claim for a novel invocation and application of a differential pressure adapter. *D* No, reject the claim for reading too close to previously cited prior art defined in US Patent 3266574. *E* No. Follow the two-pronged analysis and re-read the limitations contained in said claim to fine it indefinite. The claim should be considered indefinite under 112 ¶ 2 because the disclosure only provides a statement that known techniques or methods can be used to achieve the claimed function and does not disclose the necessary corresponding structure.

*D. Yes, and the applicant can overcome this rejection if the applicant can show that this range has different properties or produces unexpected results and signs a declaration.* Explanation: See MPEP 2144.05.In this case (34.9 vs. 35), there is a prima facie case of obviousness even though the ranges are not overlapping but are merely very close. The applicant can rebut this by showing that prior art teaches away or that the particular range is critical (e.g., it achieves unexpected results relative to the prior art range). See also In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Minerals Separation, Ltd., et al. v. Hyde, 242 U.S. 261, 271 (1916).See also MPEP 716.02. The applicant generally must provide evidence of non-obviousness in a declaration/affidavit format. (E) is false. While rare, obviousness rejections can be based on one reference. Often the examiner will argue that the reference, in combination with the knowledge of a PHOSITA, renders your invention obvious.

*Can an examiner make a prima facie case for an obviousness rejection with a single prior art reference that cites chemical amounts of 34.9% and the applicants range starts at 35%?* *A* No, because the ranges do not overlap. *B* Yes, and if the applicants argue in their response to the office action that this range has different properties or produces unexpected results, the rejection cannot be overturned. *C* No, because the ranges are not exactly the same. *D* Yes, and the applicant can overcome this rejection if the applicant can show that this range has different properties or produces unexpected results and signs a declaration. *E* No, because a 103 obviousness rejection cannot be based on only one prior art reference.

*D. Unexpected results can be shown by factual evidence or, if no factual evidence is available to the applicant, by sound argument by the applicants agent or attorney.* Explanation: (D) is the most correct answer because mere attorney argument, unsupported by factual evidence, is insufficient to establish unexpected results. In re Mayne, 104 F.3d 1339, 1343-44, 41 USPQ2d 1451, 1455-56 (Fed. Cir. 1997) (A showing of unexpected results must be based on evidence, not argument or speculation.) The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997). See also MPEP 716.01(c); MPEP 2145.(A) is not the proper choice because such a comparison is required. See In re Baxter Travenol Labs., 952 F.2d 388, 392, 21 USPQ2d 1281,1285 (Fed. Cir. 1991); In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir 1984), and MPEP 716.02(e); MPEP 2145.(B) is not the proper choice because evidence relied upon for overcoming a prima facie case of obviousness must be commensurate in scope with the claims. See In re Grasselli, 713 F.2d 731, 743, 218 USPQ 769, 778 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035, 206 USPQ 289, 296 (CCPA 1980), and MPEP 716.03(a); MPEP 2145.(C) is not the proper choice because the unobviousness of a broader range recited in a claim can be proven by a narrower range of data provided that one of ordinary skill in the art could ascertain a trend in the data which would allow that person to reasonably extend the probative value of the data to the broader range. See In re Kollman, 595 F.2d 48, 56, 201 USPQ 193, 199 (CCPA 1979); In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980); and MPEP 716.02(d); MPEP 2145.(E) is not the proper choice because the relied-upon evidence can be in the specification. See In re Soni, 54 F.3d 746, 750, 34 USPQ2d 1684, 1687 (Fed. Cir. 1995); MPEP 2145.

*Evidence of unexpected results is relied upon to overcome a prima facie case of obviousness. Which of the following is incorrect?* *A* The evidence must compare the claimed invention to the closest prior art. *B* The evidence must be commensurate in scope with the claims. *C* Data relied upon to show unexpected results need not cover the full range of the claims if one of ordinary skill in the art could ascertain a trend in the data that would allow that person to reasonably extend the probative value of the data to the full scope of the claims. *D* Unexpected results can be shown by factual evidence or, if no factual evidence is available to the applicant, by sound argument by the applicants agent or attorney. *E* The evidence need not be in an affidavit or declaration under 37 CFR1.132 if the evidence is presented in the specification of an application to which the applicant has attested.

*A. Remarks filed by applicant in a reply or brief regarding the scope of the invention differ and do not correspond in scope with the claim.* Explanation: (A) is the most correct answer. In accordance with MPEP 2172, under the heading "II. Evidence To The Contrary," states that evidence that shows a claim does not correspond in scope with that which applicant regards as applicants invention may be found, for example, in contentions or admissions contained in briefs or remarks filed by applicant. In re Prater, 415 F.2d 1393, 162 USPQ 541 (CCPA 1969). (B) is incorrect. MPEP 2172, under the heading "II. Evidence To The Contrary," states, "As noted in In re Ehrreich, 590 F.2d 902, 200USPQ 504 (CCPA 1979) agreement, or lack thereof, between the claims and the specification is properly considered only with respect to 35 U.S.C. 112, first paragraph; it is irrelevant to compliance with the second paragraph of that section." (C) is incorrect. MPEP 2172, under the heading "III. Shift In Claims Permitted," indicates that the second paragraph of 35 U.S.C. 112 does not prohibit applicants from changing what they regard as their invention during the pendency of the application. In re Saunders, 444 F.2d 599, 170 USPQ 213 (CCPA 1971) (Applicant was permitted to claim and submit comparative evidence with respect to claimed subject matter which originally was only the preferred embodiment within much broader claims (directed to a method). (D) is incorrect. MPEP 2172, under the heading "III. Shift In Claims Permitted," indicates that the fact that claims in a continuation application were directed to originally disclosed subject matter which applicants had not regarded as part of their invention when the parent application was filed was held not to prevent the continuation application from receiving benefits of the filing date of the parent application under 35 U.S.C. 120. In re Brower, 433 F.2d 813, 167 USPQ 684 (CCPA 1970). (E) is incorrect because (B), (C), and (D) are incorrect.

*Evidence that a claim may not comply with the second paragraph of 35 USC 112 occurs in accordance with the USPTO rules and the procedure set forth in the MPEP where:* *A* Remarks filed by applicant in a reply or brief regarding the scope of the invention differ and do not correspond in scope with the claim. *B* There is a lack of agreement between the language in the claims and the language set forth in the specification. *C* The scope of the claimed subject matter is narrowed during pendency of the application by deleting the originally much broader claims, and presenting claims to only the preferred embodiment within the originally much broader claims. *D* Claims in a continuation application are directed to originally disclosed subject matter (in the parent and continuation applications) which applicants did not regard as part of their invention when the parent application was filed. *E* All of the above.

*A. Yes, it invokes 112, 6th paragraph because of the sufficiently vague language describing the mechanism for moving.* Explanation: The claim limitation does not contain "means for" language. However, the non-structural term mechanism is used, and not modified before or afterward by a structural term. The non-structural claim term mechanism is subsequently modified by the functional language for moving. The structural term said finger does not modify or further define the term mechanism. Therefore, despite not using means for language, the limitation has invoked 35 U.S.C. 112, sixth paragraph and should be treated accordingly. Generic terms such as mechanism, means, element, and device typically do not connote sufficiently definite structure to avoid means-plus-function treatment. The meaning of mechanism for moving said finger in the context of the claim included little additional structure and is simply a substitute for the term means for. One of skill in the art would have no recourse but to turn to the specification to derive a structure for the mechanism for moving said finger limitation. Had applicant supplied structural context such as, a finger displacement mechanism, a lateral projection/retraction mechanism, or even a clamping finger actuator, then 35 U.S.C. 112, sixth paragraph would not have been invoked.

*Greenberg Welker Bearing Co., v. PHD, Inc., 550 F.3d 1090 (Fed. Cir. 2008) regarded U.S. Patent Nos. 6,786,478 (the 478 patent) and 6,913,254 (the 254 patent). The claimed subject matter is drawn to locating pins for insertion into a work piece to position and hold the work piece. The relevant claim language of independent claim 1 of the 254 patent, which is representative of the claim language also used in the 478 patent, is as follows: . . . at least one finger supported by said locating pin adjacent said distal end; said assembly characterized by a mechanism for moving said finger along a straight line into and out of said locating pin perpendicular to said axis A in response to said rectilinear movement of said locating pin. Does the claim limitation involving the mechanism for moving said finger invoke 35 U.S.C. 112, 6th paragraph?* *A* Yes, it invokes 112, 6th paragraph because of the sufficiently vague language describing the mechanism for moving. *B* No, the claim does not contain the limitations implied by means plus function claim construction describing the mechanism for moving [the] said finger and should be accepted. *C* Yes, because it uses "means for" language. *D* No, but it should be rejected based on the broadest reasonable interpretation of "mechanism." *E* None of the above.

*B. Reject the claim based on applying a scientific method to what is an essentially a naturally occurring phenomena inherently defined in the human body guidelines within definition contained in the 35 USC 101 natural phenomena eligible subject matter criteria.* Explanation: It found true the claimed process would be considered indistinguishable from the idea itself and upon further view can be an attempt to patent an unpatentable natural phenomenon. Citing Bilski without any further discussion, the Federal Circuit affirmed the district court's decision, noting only that the claims were neither tied to a particular machine or apparatus, nor transformed] a particular article into a different state or thing.However, by applying the two pronged Bilski standard, the Federal Circuit found that these claims were not tied to any machine, nor did they describe a process for the alteration of a composition of matter. Rather, according to the Federal Circuit, the claims sought only to patent the use of human intelligence in and of itself. In the first post-Bilski district court decision, King Pharmaceuticals Inc. v. Eon Labs Inc., 593 F. Supp. 2d 501 (E.D. N.Y., Jan. 20, 2009), the Eastern District of New York granted summary judgment of invalidity against a patentee claiming methods for informing patients about and administering a particular muscle relaxant.Although an anticipation case, the court noted that the inclusion in the method of a limitation requiring informing the patient of certain inherent properties of administering the relaxant with food could not make the claimed method patentable.The court noted that Bilski made clear that only methods that meet the machine-or-transformation test would be patentable. The court added that the claim failed the Bilski test because the underlying inherent food effect would have been unpatentable, and the act of informing others about that food effect did nothing to transform the relaxant into a different state or thing.

*In Classen Immunotherapies Inc. v. Biogen IDEC, 2008 WL 5273107 (Fed. Cir. Dec. 19, 2008) (unpublished), the Federal Circuit affirmed the district court's grant of summary judgment of invalidity under 35 U.S.C. 101. The Classen patent claimed a method of determining whether an immunization schedule affects the incidence or severity of a chronic immune-mediated disorder in a treatment group of mammals, relative to a control group of mammals.The application contained the following claim: A method of determining whether an immunization schedule affects the incidence or severity of a chronic immune-mediated disorder in a treatment group of mammals, relative to a control group of mammals, which comprises immunizing mammals in the treatment group of mammals with one or more doses of one or more immunogens, according to said immunization schedule, and comparing the incidence, prevalence, frequency or severity of said chronic immune-mediated disorder or the level of a marker of such a disorder, in the treatment group, with that in the control group. In light of various recent circuit and Supreme Court rulings, and following guidance set forth in Diamond v. Chakrabary, and more recently defined by Molecular Pathology v. Myriad Genetics, how should the examiner proceed when confronted with this claim in a future application?* *A* Reject the claim based on prosecutorial overreach citing Bilski, et al. *B* Reject the claim based on applying a scientific method to what is an essentially a naturally occurring phenomena inherently defined in the human body guidelines within definition contained in the 35 USC 101 natural phenomena eligible subject matter criteria. *C* Allow the claim, because allowing this claim will expedite treatment(s) for multiple cancer indications never addressable before, bypassing the FDAs lengthy approval process in the interest of justice. *D* Allow the claim based on a very broad read of 35 USC 101 using a recent ruling from the Supreme Court speaking to affordable drug pricing. *E* Allow the claim based based on 35 USC 101.

*Both (A) or (C) were accepted.* Explanation: The claim limitations do not employ means for language to be invoked by 35 U.S.C. 112, sixth paragraph limitations. The non-structural term mechanism is used, but it is modified by the term detent, which has both a non-structural functional meaning and a structural meaning. The expression of a claim element in functional terms alone is not sufficient to invoke 35 U.S.C. 112, sixth paragraph; the claim element must be read in the context of the claim and in light of the specification to verify that the claim is not reciting specific structure. When viewed in context, the modifier detent has a structural meaning in this instance. Many devices take on the name of the function they perform. A detent mechanism in the present circumstances is such a term. The drafters usage of the term detent mechanism in the claim was indicative of a structural recitation and not a functional recitation. After using the claim term detent mechanism the drafter set forth the structure defining the detent mechanism in the claim. The drafter did not set forth any functional language in conjunction with the term detent mechanism. Therefore, the term detent served as a structural modifier of the non-structural term mechanism removing the limitation from treatment under 35 U.S.C. 112, sixth paragraph. Conclusion: 35 U.S.C. 112, sixth paragraph is not invoked. The above analysis is in accordance with MPEP 2181 I 8th Ed. Rev. 6., Sept 2007 Pages 2100-235-36, and further in view of the analytical framework of the 2011 Supplementary Guidelines to determine whether a limitation invokes 35 U.S.C. 112, sixth paragraph.

*In Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580 (Fed. Cir. 1996) U.S. Patent No. 4,674,501 (the 501 patent) The claimed subject matter was drawn to an endo-mechanical surgical instrument. The relevant claim language of independent claim 1 of the 501 patent is as follows: . . . , a radially enlarged wheel on said sleeve and said wheel and said one handle having a cooperating detent mechanism defining the conjoint rotation of said shafts in predetermined intervals, . . . Issue: Does the claim limitation detent mechanism defining the conjoint rotation¦ invoke 35 U.S.C. 112, sixth paragraph & should the claim be allowed.* *A* No, it does not invoke and yes, it attempts to claim a previously judicially defined exception that falls under the guidance contained in 74618 Federal Register / Vol. 79, No. 241 / Tuesday, December 16, 2014 / Rules and Regulations and should be allowed by the examiner. *B* No, the claims as written violates judicial overreach for apparently reading on a judicially defined disclosure that falls under the guidelines defined in 74618 Federal Register / Vol. 79, No. 241 / Tuesday, December 16, 2014 / Rules and Regulations and should be rejected by the examiner. *C* No it does not invoke and yes allow the claim if only the applicant restates the claim to allow for only detent mechanisms that are focused on collocated conjoint rotation detent mechanisms. *D* No, reject the claim based on the need for collocated conjoint rotation points. *E* None of the above.

*D. Reject the claim due to indefiniteness based on the language concerning a fragile gel.* Explanation: D. Although the term fragile gel appears only in the preamble, the claimed drilling fluid was interpreted as being limited to a fragile gel because during prosecution the claims were distinguished from prior art fluids by stating, for example, that the claims were limited to a fragile gel drilling fluid. Two functional definitions were proposed for the term fragile gel: (1) the ability of the fluid to transition quickly from gel to liquid, and (2) the ability of the fluid to suspend drill cuttings at rest (i.e., the fluid is being defined by what it does rather than what it is). The court held that the term fragile gel is not sufficiently definite if construed in accordance with the first definition because a person of ordinary skill in the art could not determine how quickly the gel must transition to a liquid when force is applied and how quickly it must return to a gel when the force is removed, and is not sufficiently definite if construed in accordance with the second definition because nothing in the record suggests what degree of such capability is sufficient. Thus, the court held that the term fragile gel is indefinite under 112, ¶2 because it is ambiguous as to the requisite degree of the fragileness of the gel, the ability of the gel to suspend drill cuttings (i.e., gel strength), and/or some combination of the two. See MPEP 2173.05(g). [based on USPTO PPT internal training matl covering subject matter treatment under 112]

*In Halliburton Energy Services, Inc., v. M-I LLC, 514 F.3d 1244, 85 USPQ2d 1654 (Fed. Cir. 2008) Representative Claim (U.S. Patent No. 6,887,832 the following claim was proposed: A method for conducting a drilling operation in a subterranean formation using a fragile gel drilling fluid comprising: (a) an invert emulsion base; (b) one or more thinners; (c) one or more emulsifiers; and (d) one or more weighting agents, wherein said operation includes running casing in a borehole. How should an examiner in the USPS examining corp address this claim?* *A* Dismiss the claim due to prosecutorial overreach. *B* Re-review the claim based on findings established by the Environmental Protection Agency, which may have more highly skilled insight on the subject matter. *C* Accept the claim based on sufficient specificity contained the conducting a drilling formation language. *D* Reject the claim due to indefiniteness based on the language concerning a fragile gel. *E* Accept the claim absent the broadest reading of 35 USC 112.

*C. No, allow the claim since it avoids any potential 35 USC 112 claim limitations* Explanation: The claim limitation does not use means for language to invoke 35 U.S.C. 112, sixth paragraph. It is unclear whether the term assembly by itself connotes or describes structure. The term assembly, however, is preceded by the modifier connector, which does connote or describe in general a connective structure. The claim term connector assembly is subsequently modified by the functional language for connecting. The fact that the term connector assembly does not suggest a particular structure would not result in 35 U.S.C. 112, sixth paragraph being invoked. Further, the specification discloses a connector assembly as a structure, the prior art and dictionaries indicate that the term connector assembly refers to a device that takes its name from the function it performs. Therefore the term connector assembly is structural and not a nonce word or a verbal construct that is not recognized as the name of structure and simply a substitute for the term means for. Accordingly, the presence of a structural term combined with the absence of any means for language indicates that 35 U.S.C. 112, sixth paragraph is not invoked. Conclusion: 35 U.S.C. 112, sixth paragraph is not invoked. The above analysis is in accordance with the analytical framework of the 2011 Supplementary Guidelines to determine whether a limitation invokes 35 U.S.C. 112, sixth paragraph.

*In Lighting World, Inc., v. Birchwood Lighting, 382 F.3d 1354 (Fed. Cir. 2004) expressed in U.S. Patent No. 5,448,460 (the 460 patent) and U.S. Patent No. 5,221,139 (the 139 patent) The claimed subject matter relates to a fluorescent light fixture. The relevant claim language of independent claim 1 of the 460 patent is as follows: c) a connector assembly for connecting each pair of adjacent support members, said connector assembly being pivotally connected to said pair of adjacent support members;¦ Issue: Does the claim limitation connector assembly for connecting invoke 35 U.S.C. 112, sixth paragraph?* *A* No, but the claim should be dismissed for anticipation since it recites nothing more than a simple variation of a common fluorescent light bulb. *B* Yes, the claim includes a recitation of a connector assembly for connecting light element that is sufficiently close to a read upon the guidance contained in common fluorescent light bulbs. *C* No, allow the claim since it avoids any potential 35 USC 112 claim limitations. *D* Yes, reject the claim for being in conflict with 74618 Federal Register / Vol. 79, No. 241 / Tuesday, December 16, 2014 / Rules and Regulations. *E* No, but still reject the claim for infringing on previously defined methods for connecting an assembly employed in light assemblies.

*D. No, the claim does not invoke language that recite limitation contained in 35 U.S.C. 112 since circuits using multiple control circuit have been previously allowed under the broadest reading by those highly skilled examiners corp. working the field(s) of electrical arts.* Explanation: The claim limitations do not use means for language to invoke 35 U.S.C. 112, sixth paragraph. The term circuit by itself, connotes structure, is defined as structure in dictionaries and has known structural meaning in the art. The claim term circuit is subsequently modified by functional language describing the circuits operation. The presence of the term circuit conveys to one of ordinary skill in the relevant art sufficient detail to connote structure. Combined with the absence of any means for language, the circuit limitations are not means-plus-function limitations subject to 35 U.S.C. 112, sixth paragraph treatment. Conclusion: 35 U.S.C. 112, sixth paragraph is not invoked. The above analysis is in accordance with the analytical framework of the 2011 Supplementary Guidelines to determine whether a limitation invokes 35 U.S.C. 112, sixth paragraph.

*In Linear Tech. Corp., v. Impala Linear Corp., 379 F.3d 1311 (Fed. Cir. 2004) filed as U.S. Patent No. 5,481,178 (the 178 patent) The claimed subject matter is drawn to a control circuit for maintaining high efficiency over broad current ranges in a switching regulator circuit. The relevant claim language from claim 1 of the 178 patent is as follows: 1. A circuit for controlling a switching voltage regulator . . . the control circuit comprising: a first circuit for monitoring a signal from the output terminal to generate a first feedback signal; a second circuit for generating a first con-trol signal during a first state of circuit operation, the first control signal being responsive to the first feedback signal to vary the duty cycle of the switching transistors to maintain the out-put terminal at the regulated voltage; and a third circuit for generating a second control signal during a second state of circuit operation to cause both switching transistors to be simultaneously OFF for a period of time if a sensed condition of the regulator indicates that the current sup-plied to the load falls below a threshold . . . . Issue: Do the claim limitations for a circuit for monitoring and a circuit for generating invoke 35 U.S.C. 112, sixth paragraph?* *A* Yes, reject the claim citing that using switching voltage regulators is a well known practice previously identified in other prior art available prior art to the examiner under chapters 700 and 2100 of the MPEP. *B* Yes, reject the claim described a switched voltage regulator for the purpose that has been previously described in US Patent 9,130,456 B. *C* Yes, reject the claim since using a switched voltage regulator is widely understood by those highly skilled in the field of voltage regulators as being inherently inferior to linear regulators. *D* No, the claim does not invoke language that recite limitation contained in 35 U.S.C. 112 since circuits using multiple control circuit have been previously allowed under the broadest reading by those highly skilled examiners corp. working the field(s) of electrical arts. *E* Any of the above (A), (B), (C), or (D).

*A. Yes, reject the claim for because the written description and enablement requirements of 112 ¶1 were not met because [a]fter reading the patent, a person of skill in the art would not understand how to make a seamless DWT generically and would not understand [patentee] to have invented a method for making a seamless DWT, except by ˜maintaining updating sums of DWT coefficients.* Explanation: The court noted that claim 21 is directed to creating a seamless array of DWT coefficients generically, whereas the specification is directed at describing a particular method for creating a seamless DWT"i.e., by maintaining updated sums of DWT coefficients. Unlike claim 1, which includes the step of maintaining updated sums, claim 21 does not contain limitations as to how the seamless DWT is accomplished. The court stated, The trouble with allowing claim 21 to cover all ways of performing DWT-based compression processes that lead to a seamless DWT is that there is no support for such a broad claim in the specification. The specification provides only a single way of creating a seamless DWT, which is by maintaining updated sums of DWT coefficients. There is no evidence that the specification contemplates a more generic way of creating a seamless array of DWT coefficients. The court explained that while it is unnecessary to spell out every detail of the invention in the specification ¦ enough must be included to convince a person of skill in the art that the inventor possessed the invention and to enable such a person to make and use the invention without undue experimentation. ANSWER: (A) In this case, the court found that the written description and enablement requirements of 112 ¶1 were not met because [a]fter reading the patent, a person of skill in the art would not understand how to make a seamless DWT generically and would not understand [patentee] to have invented a method for making a seamless DWT, except by ˜maintaining updating sums of DWT coefficients.

*In LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 76 USPQ2d 1724 (Fed. Cir. 2005) the court ruled on the following representative claim (U.S. Patent No. 5,710,835): 21. A method for selectively viewing areas of an image at multiple resolutions in a computer having a primary memory for data processing and a secondary memory for data storage, the method comprising the steps of: storing a complete set of image data array I(x,y) representing said image in a first secondary memory of said computer; defining a plurality of discrete tile image data Tij(x,y) subsets, where said complete set of image data I(x,y) is formed by superposition of said discrete tile image data Tij(x,y); performing one or more discrete wavelet transformation (DWT)-based compression processes on each said tile image data Tij(x,y) in a selected sequence to output each said discrete tile image data Tij(x,y) as a succession of DWT coefficients in a succession of subband sets, where one subband of each set is a low-resolution representation of said discrete tile image data Tij(x,y) to form a sequence of low-resolution representations of said image data array I(x,y) to selected resolutions; selecting a viewing set of said image data array I(x,y) to be viewed at a desired resolution: determining a viewing subset of said DWT wavelet coefficients that support said viewing set of said image data at said desired resolution; and forming from said subset of said DWT wavelet coefficients a computer display of said viewing set of said image data at said desired resolution. Background: The invention relates to wavelet transforms, which allow for compression of digital images with very little loss of information and, in particular, a process for creating a seamless discrete wavelet transform (DWT). Issue: Is claim 21, which covers all ways of performing DWT-based compression processes that lead to a seamless DWT, invalid under 112 ¶1?* *A* Yes, reject the claim for because the written description and enablement requirements of 112 ¶1 were not met because [a]fter reading the patent, a person of skill in the art would not understand how to make a seamless DWT generically and would not understand [patentee] to have invented a method for making a seamless DWT, except by ˜maintaining updating sums of DWT coefficients. *B* No, reject the claim since a complete set of image data arrays described as I(x,y) are well known to those highly skilled in the art DWT transforms. *C* Reject the claim since it seems to be a readily apparent variation of Google Maps. *D* No, reject the claim since the post-processed set of image data arrays I(x,y) are well known to those highly skilled in the art DWT transforms. *E* Viewing the set of said image data array I(x,y) developed using a DWT transform, an experienced designer in this field would be able to develop a usable work-around to this proposed algorithm.

*C. Yes, even though "means for" is not used, the use of "mechanism" without any structural modifiers is sufficient to invoke 35 USC 112, 6th paragraph.* Explanation: The cited limitation does not employ "means for" language. The non-structural term "mechanism" is used, and preceded by the non-structural modifier "colorant selection." The term "colorant selection" is not defined as structure in the specification, has no dictionary definition connoting structure, and no known structural meaning in the art. The non-structural claim term "mechanism" is subsequently modified by the functional language "for receiving." "Mechanism" is not subsequently modified by any structural language. Therefore, despite not using "means for" language, the limitation is considered to have invoked 35 U.S.C. 112, sixth paragraph and should be treated accordingly. Generic terms such as mechanism, means, element, and device, typically do not connote sufficiently definite structure. Applicants usage of mechanism in the instant case is synonyms with "means for." Also, we cannot yet say whether the claim will ultimately be allowed because we do not know the contents of the specification. To get over the 112 p.6 hurdle, it must sufficiently describe the functional terms used in the claims to avoid indefiniteness. That's why (B) is incorrect.

*In MIT v. Abacus Software, 462 F.3d 1344 (Fed. Cir. 2006) regarding U.S. Patent No. 4,500,919, the claimed subject matter relates to computer assisted color processing and editing systems for use in color printing. The relevant claim language of independent claim 1 of the '919 patent is as follows: ... colorant selection mechanism for receiving said modified appearance signals and for selecting corresponding reproduction signals representing values of said reproducing colorants to produce in said medium a colorimetrically-matched reproduction. Does the claim limitation invoke 35 U.S.C. 112, sixth paragraph?* *A* No, because the claim is uses contains no "means" language. *B* Yes, there is a possible application of the means plus function claim construction, and the claim will not be allowed. *C* Yes, even though "means for" is not used, the use of "mechanism" without any structural modifiers is sufficient to invoke 35 USC 112, 6th paragraph. *D* No, but the claim still should not be allowed. *E* None of the above.

*D. No, since aesthetic correction circuitry for" does not employ claim language that requires a presumption that 35 USC 112 sixth paragraph is invoked.* Explanation: Analysis: (D) The claim limitation does not use "means for" language sufficient to invoke the 35 U.S.C. 112, sixth paragraph presumption. The term "circuitry" by itself, connotes structure, is defined as structure in dictionaries and has known structural meaning in the art. The presence of a structural term combined with the absence of any "means for" language indicates that 35 U.S.C. 112, sixth paragraph is not invoked. Also, the additional modifiers of "aesthetic correction" provide additional information and structure about the "circuitry" by describing its use.

*In MIT v. Abacus Software, 462 F.3d 1344 (Fed. Cir. 2006), the Federal Circuit considered U.S. Patent No. 4,500,919. The claimed subject matter relates to computer assisted color processing and editing systems for use is in color printing. The relevant claim language of independent claim 1 of the '919 patent is as follows: ... display means connected to the scanner for receiving the appearance signals and aesthetic correction circuitry for interactively introducing aesthetically desired alterations into said appearance signals to produce modified appearance signals; ... Does the claim limitation "aesthetic correction circuitry for" invoke 35 U.S.C. 112, sixth paragraph?* *A* Yes, the use of aesthetic correction circuitry for interactively introducing aesthetically desired alterations is sufficiently broad enough to warrant a preliminary rejection. *B* No, since using and aesthetic correction circuitry for interactively introducing aesthetically desired alterations is sufficiently precise to allow the claim. *C* Yes, since using: and aesthetic correction circuitry for interactively introducing aesthetically desired alterations falls under the rubric sufficient to invoke 35 USC 112, sixth paragraph. *D* No, since aesthetic correction circuitry for" does not employ claim language that requires a presumption that 35 USC 112 sixth paragraph is invoked. *E* Maybe, but the examiner must first request that the applicant provide a further definition of the meaning of appearance signal(s) and further use of correction circuitry for interactively introducing aesthetically desired alterations language before issuing a first rejection.

*B. Yes, the claim language used in describing the manipulation of a lever from its disengaged position sufficiently contains language that may invoke 35 U.S.C. 112, sixth paragraph.* Explanation: The claim limitation does not use "means for" language so it does not automatically invoke 35 U.S.C. 112, sixth paragraph. The non-structural term "element" is used, and preceded by the modifier "lever moving," which is not clearly either a structural or non-structural. It is descriptive of the function and does not impart any specific structure. It's structure is also not defined in the specification, it has no dictionary definition connoting structure, and it does not have a known structural meaning in the relevant art. Therefore, the "lever moving" modifier is considered a non-structural modifier. It is subsequently modified by only functional language, and there is no structure recited in the limitation that would remove it from application of 35 U.S.C. 112, sixth paragraph. Therefore, despite the lack of "means for" language, the limitation is considered to have invoked 35 U.S.C. 112, sixth paragraph and should be treated accordingly.

*In Mas-Hamilton Group, v. LaGard, Inc., 156 F.3d 1206 (Fed. Cir. 1998) in the matter of U.S. Patent No. 5,307,656, the claimed subject matter is drawn to an electro-mechanical lock. The relevant claim language from claim 3 of the '656 patent reads as follows: . . . a substantially non-resilient lever moving element for moving the lever from its disengaged position for engaging the protrusion of the lever with the cam surface on the cam wheel so that the rotation of the cam wheel thereafter in the given direction changes the locking mechanism from the locked condition to the unlocked condition; . . . . The structure of the "lever moving element" is not defined in the specification, it has no dictionary definition connoting structure, and it does not have a known structural meaning in the relevant art. Does the claim limitation "lever moving element for moving" invoke 35 U.S.C. 112, sixth paragraph?* *A* No, the claim language does not invoke 35 U.S.C. 112, sixth paragraph. *B* Yes, the claim language used in describing the manipulation of a lever from its disengaged position sufficiently contains language that may invoke 35 U.S.C. 112, sixth paragraph. *C* No, the claim is sufficiently distinct as to provide a defensible argument that it does not invoke 35 U.S.C. 112, sixth paragraph. *D* No, because the functional term is accompanied by a structural modifier. *E* None of the above.

*E. No, accept the claim for using sufficiently broad language that avoids interpretation contained in 35 USC 112.* Explanation: The claim limitation does not use means for language to invoke 35 U.S.C. 112, sixth paragraph. To one of ordinary skill in the relevant art, the term detector connotes or describes in general a structure. The claim term digital detector is subsequently modified by the functional language for detecting. The fact that the term detector does not suggest a precise physical structure would not result in 35 U.S.C. 112, sixth paragraph being invoked. The claim term detector is understood in the relevant prior art and defined in dictionaries as having a well known meaning in the electrical arts connotative of structure. Further, just because the claim term detector is a name for structure drawn from the function it performs, should not result in treatment under 35 U.S.C. 112, sixth paragraph. Therefore the term detector is structural and not a nonce word or a verbal construct that is not recognized as the name of structure and simply a substitute for the term means for. Accordingly, the presence of a structural term combined with the absence of any means for language indicates that 35 U.S.C. 112, sixth paragraph is not invoked. Conclusion: 35 U.S.C. 112, sixth paragraph is not invoked. The above analysis is in accordance with MPEP 2181 I 8th Ed. Rev. 6., Sept 2007 Pages 2100-236, and further in view of the analytical framework of the 2011 Supplementary Guidelines to determine whether a limitation invokes 35 U.S.C. 112, sixth paragraph.

*In Personalized Media Commcns, LLC, v. ITC, 161 F.3d 696 (Fed. Cir. 1998) first cited in United States Patent 5,335,277 (the 277 patent) The claimed subject matter relates to an integrated system for communicating programming, e.g. electronically transmitted entertain, instruct or inform, including television, radio, broadcast print, etc. The relevant claim language of independent claim 44 of the 277 patent is as follows: . . .a digital detector operatively connected to a mass medium receiver for detecting digital information in a mass medium transmission and transferring some of said detected information to a processor; . . . Issue: Does the claim limitation digital detector invoke 35 U.S.C. 112, sixth paragraph?* *A* Yes, accept the application since the use of a digital detector were first described in US Patent 7298825 B2 which describes a portable digital detector system. *B* No, reject the application citing in a metal detector using a metal detector system first described in US Patent 4709213 A. *C* Yes, reject the claim citing the prior art contained in US 6282264 B1 describing a digital flat panel x-ray detector. *D* No, accept the claim based on a method and system for object detection employing the findings contained in US 7099510 B2. *E* No, accept the claim for using sufficiently broad language that avoids interpretation contained in 35 USC 112.

*E. None of the above.* Explanation: (E) is the most correct answer. As set forth in MPEP 2131.05,"˜Arguments that the alleged anticipatory prior art is ˜nonanalogous art or ˜teaches away from the invention or is not recognized as solving the problem solved by the claimed invention, [are] not ˜germane to a rejection under section 102. Twin Disc, Inc. v. United States, 231 USPQ417, 424 (Cl.Ct.1986) (quoting In re Self, 671 F.2d 1344, 213 USPQ 1, 7 (CCPA 1982)). A reference is no less anticipatory if, after disclosing the invention, the reference then disparages it. The question whether a reference ˜teaches away from the invention is inapplicable to an anticipation analysis. Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed.Cir.1999)." Therefore, answers (A) through (D) are incorrect. See also MPEP 706.02(b) as to ways to overcome a rejection under 35 U.S.C. 102.

*In accordance with patent laws, rules and procedures as related in the MPEP, a rejection under 35 USC 102 can be overcome by demonstrating:* *A* the reference is nonanalogous art. *B* the reference teaches away from the claimed invention. *C* the reference disparages the claimed invention. *D* (A), (B) and (C). *E* None of the above.

*C. A billing process containing mathematical algorithms producing a written invoice.* Explanation: (C) is the most correct answer. 35 U.S.C. 101; MPEP 2106, under the heading "A. Identify and Understand Any Practical Application Asserted for the Invention." With regard to computer-related inventions, MPEP 2106 states that "[a]lthough the courts have yet to define the terms useful, concrete, and tangible in the context of the practical application requirement for such inventions, the following example illustrates claimed inventions that have a practical application because they produce useful, concrete, and tangible results: Claims drawn to a long-distance telephone billing process containing mathematical algorithms were held to be directed to patentable subject matter because the claimed process applies the Boolean principle to produce a useful, concrete, tangible result without pre-empting other uses of the mathematical principle. AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352, 1358, 50 USPQ2d 1447, 1452 (Fed. Cir. 1999)." See also, State Street Bank & Trust Co. v. Signature Financial Group Inc., 149 F. 3d 1368, 1374, 47 USPQ2d 1596, 1601-02 (Fed. Cir. 1998). Answers (A), (B) and (D) are incorrect. MPEP 2105 states that abstract ideas, laws of nature and physical phenomena have been held by the Supreme Court to be unpatentable subject matter under 35 U.S.C. 101. Answer (E) is incorrect because answers (A), (B) and (C) are incorrect.

*In accordance with the patent laws, rules and procedures as related in the MPEP, which of the following is patentable subject matter under 35 USC 101?* *A*A novel and unobvious abstract idea. *B*A previously undiscovered law of nature. *C*A billing process containing mathematical algorithms producing a written invoice. *D*A novel and unobvious discovery of a physical phenomenon. *E*All of the above.

*A. A deficiency under 35 USC 101 also creates a deficiency under 35 USC 112, first paragraph.* Explanation:(A) is the most correct answer. As stated in MPEP 2107.01 under the heading "IV. Relationship Between 35 U.S.C. 112, First Paragraph, And 35 U.S.C. 101," "A deficiency under 35 U.S.C. 101 also creates a deficiency under 35 U.S.C. 112, first paragraph. See In re Brana, 51 F.3d 1560, 34 USPQ2d 1436 (Fed. Cir. 1995); In re Jolles, 628 F.2d 1322, 1326 n.10,206 USPQ 885, 889 n.11 (CCPA 1980); In re Fouche, 439 F.2d 1237, 1243, 169 USPQ 429, 434 (CCPA 1971) (˜If such compositions are in fact useless, appellants specification cannot have taught how to use them.)." (B) is not correct. MPEP 2107, under the heading "II.Examination Guidelines For The Utility Requirement," and see Brooktree Corp. v. Advanced Micro Devices, Inc., 977 F.2d 1555, 1571, 24 USPQ2d 1401, 1412 (Fed. Cir. 1992); and E.I. du Pont De Nemours and Co. v. Berkley and Co., 620 F.2d 1247, 1260 n.17, 205 USPQ 1, 10 n.17 (8th Cir. 1980). (C), (D) and (E) are not correct. MPEP 2107, under the heading "II. Examination Guidelines For The Utility Requirement," and see E.I. du Pont De Nemours and Co. v. Berkley and Co., 620 F.2d 1247, 1260 n.17, 205 USPQ 1, 10 n.17 (8th Cir. 1980).

*In connection with the utility of an invention described in a patent application, which of the following conforms to the USPTO rules and the procedure set forth in the MPEP?* *A*A deficiency under 35 USC 101 also creates a deficiency under 35 USC 112, first paragraph. *B*To overcome a rejection under 35 USC 101, it must be shown that the claimed device is capable of achieving a useful result on all occasions and under all conditions. *C*A claimed invention is properly rejected under 35 USC 101 as lacking utility if the particular embodiment disclosed in the patent lacks perfection or performs crudely. *D*To overcome a rejection under 35 USC 101, it is essential to show that the claimed invention accomplishes all its intended functions. *E*A claimed invention lacks utility if it is not commercially successful.

*C. Yes, the claim should be allowed for being considered as definite under 35 USC 112.* Explanation: (C) The claim limitation invokes 112 ¶ 6, therefore the next step in the analysis is to determine if the specification discloses the corresponding structure, material, or acts in accordance with 112 ¶ 6. The issue is whether one of ordinary skill in the relevant art would understand the written description itself to disclose sufficient structure for storing data. The specification need only disclose sufficient structure to perform the function to one of ordinary skill in the relevant art and clearly link or associate structure to the claimed function. The specification sets forth processing systems that consist of a general purpose computer with memory to store individual caller data. As the function of storing data, in this instance, is not a specific function that requires a specific program or algorithm, it need not be performed by a special purpose computer. The function of storing data can be performed by any general purpose computer without special programming. As such, the means-plus-function limitation of storing data does not run afoul of the rule against purely functional claiming, because the function is co-extensive with the structure as disclosed, i.e., a general purpose computer. Conclusion: The claim is considered definite under 112 ¶ 2 because the disclosure provides sufficient structure that is clearly linked to the function of storing data, that is, a general purpose computer with memory. Therefore, one of ordinary skill in the relevant art would understand the written description discloses corresponding structure as required by 35 USC 112 ¶ 6.

*In re Katz Interactive Call Processing Patent Litig. v. American Airlines, Inc., 97 U.S.P.Q.2D 1737 (Fed. Cir. 2011 ) U.S. Patent No. 5,815,551 (the 551 patent) The claimed subject matter is drawn to a telephonic-interface statistical analysis system. The relevant claim language of independent claim 14 is as follows: . . . generator structure selectively coupled to the interface structure and the record memory for providing computer generated numbers to the individual callers and storing the computer generated numbers in the record memory . . . The written description of the specification discloses the following in support of the noted means-plus function recitation of claim 14: The system of the present invention may qualify an entitled set of callers, then receive answer data in the course of the call and develop identification or designation data, sequence data and statistical data. The system may then provide data cells for storing individual data while assigning confirmable identifications to the entitled set. From the set, a subset is defined. That is, in accordance with various formats, acquired data is processed in statistical relationship, or in relation to applied external data to accomplish such functional operating formats as an auction sale, a contest, a lottery, a poll, a merchandising operation, a game, and so on. 551 patent, col. 2 ll. 11 " 21 The processing systems P1-Pn are similar, therefore, only the processing system P1 is shown in any detail. . . . The interface 20 provides the connection of the fifty lines to a switch 21 which is in turn coupled to fifty function units, or processors PR1-PRn. As indicated above, multiple function units, or processors, are described in the disclosed embodiment to facilitate the explanation. Of course, nonparallel techniques and multiplexed operations might well be employed as alternatives. For a similar reason, as disclosed herein, each of the processors PR1-PRn includes memory cells for each of the callers individual data. Development and compilation of data in such cells according to various operating formats is described below. In the disclosed embodiment, the processors PR1-PRn are connected collectively to the command computer terminal CT (incorporating a CRT display), the interface terminal IT, and the printer PR. Note that the CRT display serves to visually display data regarding select subsets as explained in detail below. Exemplary detailed structures for the processors PR1-PRn are described below; however, in general, the units may comprise a microcomputer, for example, programmed as suggested above and as disclosed in detail below to accomplish specific operating formats. . . . On the qualification and designation of callers, the system enters a data accumulation phase during which digital data (formatted at one of the telephone terminals T1-Tn) is processed by one of the processors PR1-PRn. In general, the processing evolves a subset (at least one caller) the members of which may be verified and confirmed. 551 patent, col. 4 l. 35 " col. 5 l. 52 Issue: Does the disclosure of only a general purpose computer satisfy the corresponding structure, material or acts requirement of 112 ¶ 6 to avoid an indefiniteness rejection?* *A* Reject the claim since the use of processing systems P1-Pn are sufficiently similar, therefore, only the processing system of P1 is shown in any detail. . . . The interface [20] provides the connection of the fifty lines to a switch 21 which is in turn coupled to fifty function units, or processors PR1-PRn. As indicated above, multiple function units, or processors, are described in the disclosed embodiment to facilitate the explanation. The use of standard PCI or VME compatible bus signaling does not sufficiently describe in detail the method for addressing any of the individual circuit processing units PR1-PRn. *B* No, reject the claim since the use of a direct memory access (DMA) unit to collecting formatted data from any of the terminals T1-Tn circumvents the use the definiteness requirements of 35 USC 102. A DMA unit would allow any of the slave terminals T1-Tn to output their collected data without the use of a supervising CPU / circuit. *C* Yes, the claim should be allowed for being considered as definite under 35 USC 112. *D* No, reject the claim since processed digital data is too vague to recite a proper structure in accordance with 35 USC 112 and Bilski and fails the sufficient transformation prong further defined in Bilksi, et al. *E* Yes, the claim should be allowed under 35 USC 112 paragraph 2 but rejected under 35 USC 112 paragraph 6.

*D. Allow the claim based on sufficient specificity regarding the process to formulate zeolite in the presence of an alkali metal.* Explanation: The claimed invention pertains to the synthesis of zeolites without alkali metal in the reaction mixture. The parties agreed that the prior art syntheses of zeolitic compounds required, as an essential ingredient, alkali metal compounds, yet, at the same time, that there are minute but, nevertheless, measurable quantities of alkali metal (however undesired) in the reagents utilized in [the claimed] synthesis. The court found the claim language essentially free of alkali metal not indefinite under 112, ¶2. The court determined that the disclosure provided a general guideline and examples sufficient to enable a person of ordinary skill in the art to determine whether a process uses a silicon dioxide source ˜essentially free of alkali metal to make a reaction mixture ˜essentially free of alkali metal to produce a zeolitic compound ˜essentially free of alkali metal. The court was persuaded that such a person would draw the line between unavoidable impurities in starting materials and essential ingredients. See MPEP 2173.05(b).

*In re Marosi, 710 F.2d 799, 218 USPQ 289 (Fed. Cir. 1983) the following claim was reviewed and ruled upon by a Superior Court: (U.S. Application Serial No. 45,175, filed June 4, 1979): A process for the manufacture of a nitrogen-containing crystalline metal silicate having a zeolite structure which comprises: adding a metal oxide, metal hydroxide, metal sulfate, metal nitrate or hydrated metal oxide and a silicon dioxide source that is essentially free of alkali metal to a 5 to 90% strength aqueous solution of hexamethylenediamine to form a mixture that is essentially free of alkali metal; stirring the mixture to form a homogeneous gel; and thereafter heating the gel to form the crystalline metal silicate; wherein said metal is selected from the group consisting of aluminum, boron, arsenic, antimony, vanadium, iron and chromium, and whereby said crystalline metal silicate is essentially free of alkali metal. How should have the examiner best address this claim?* *A* Dismiss the claim in light of the guidance defined by Bilski and the study slides produced for the USPTO examiner corp. *B* Allow the claim based on the findings contained in Bilski et al. *C* Reject the claim and request the applicant to provide more detailed findings regrinding the formation on alkali metals as previously established in a prior art search regarding the use of alkali metals in the formation of zeolite. *D* Allow the claim based on sufficient specificity regarding the process to formulate zeolite in the presence of an alkali metal *E* Punt to the smart guys in the office

*A. Allow the claim as definite because, in all cases, a substantial amount of infrared radiation is transmitted, and the specification indicates that the degree of transparency varies depending on various factors.* Explanation: (A) The court found the functional claim language transparent to infrared rays to not be indefinite under 112, ¶2. The court determined that the record established that prior art compositions were substantially opaque to infrared rays and that applicants produced a composition which is substantially transparent to such rays. The court also determined that the figures reproduced in the specification indicate that the degree of transparency varies depending on such factors as the conditions employed in producing the crystal, the thickness of the crystal and the particular wave length of the radiation transmitted, but that in all cases a substantial amount of infrared radiation is transmitted. Thus, the court did not read the disclosure as suggesting that the claim covered only certain degrees of transparency and determined that the limits of the claim when read in light of that disclosure were sufficiently clear. See MPEP 2173.05(g). [based on USPTO PPT internal training material covering subject matter treatment under 112]

*In re Swinehart, 439 F.2d 210, 169 USPQ 226 (CCPA 1971) (U.S. Application Serial No. 314,952, filed October 9, 1963, had the following claim: A new composition of matter, transparent to infrared rays and resistant to thermal shock, the same being a solidified melt of two components present in proportion approximately eutectic, one of said components being BaF2 and the other being CaF2. Prior art compositions were substantially opaque to infrared rays. Applicant's specification and figures disclose a composition which is substantially transparent to such rays, and the degree of transparency depends on numerous factors such as the conditions employed in producing the crystal, the thickness of the crystal, and the particular wave length of the radiation transmitted. How should the examiner deal with this claim in regards to the claim's definiteness?* *A* Allow the claim as definite because, in all cases, a substantial amount of infrared radiation is transmitted, and the specification indicates that the degree of transparency varies depending on various factors. *B* Allow the claim based on the sufficiently vague disclaimers contained in the language in the suppositional phrase calling for said device being transparent to infrared rays to a broader reading on an element contained within to be sufficiently unique. *C* Reject the claim based on prior established precedent defined by prior precedent set-out in contained in Union Carbon v. Binney & Smith. *D* Reject the claim based on the broadest interpretation of 35 USC 112 due to too many indefinites contained in the claims(as) further defined in MPEP 2173.05(g). *E* None of the above.

*(A) or (C) accepted.* Explanation: (A) or (C) accepted The court found the claim language near the edge of the ungal crest to be not indefinite under 112, ¶2. The court first considered the claim language itself and found that it implies that an incision is made in the epidermis somewhere close to or at the edge of the ungual crest. The court then referred to several portions of the specification and found that it is consistent with that understanding of the term. The court also found that Figure 2 provides a standard for measuring the meaning of the term near in that it shows an example of such an incision ˜near the edge of the ungual crest and illustrates where the first incision is made in relation to the crest and phalanx. The court therefore concluded that [t]he claim language and the specification make clear that the term ˜near means close to or at the most distal edge of the ungual crest. See MPEP 2173.05(b).

*In the Courts findings published in the case of Young v. Lumenis, Inc., 492 F.3d 1336, 83 USPQ2D 1191 (Fed. Cir. 2007) the following claim was addressed in decision rendered in the following Representative Claim (U.S. Patent 6,502,579): A feline onychectomy surgical method using a laser cutting instrument, the method comprising: (a) forming a first circumferential incision in the epidermis near the edge of the ungual crest of the claw, thereby severing at least some of the epidermis from the ungual crest; (b) applying cranial traction to the epidermis severed from the ungual crest to displace the distal edge of the epithelium cranially; (c) incising the extensor tendon near its insertion on the ungual crest; (d) incising the synovium of the PII-PIII joint; (e) applying traction to the claw in the palmar direction for disarticulating the PII-PIII joint; (f) ablating the medial and lateral collateral ligaments; (g) incising the digital flexor tendon; and (h) incising the subcutaneous tissues of the pad of the second phalanx. How should an examiner respond when reading this application in the field of the medical arts?* *A* Accept the claim under the provisions contained in 35 USC 112 ¶2. *B* Reject the claim based on the findings contained in 2the US*0 publication of 2-14 Interim Guidance on Subject Matter Eligibility. *C* Accept this claim based on the findings contained in 2the US*0 publication of 2-14 Interim Guidance on Subject Matter Eligibility. *D* Reject this claim based on prosecutorial overreach of the proposed PII-Pill joint. *E* None of the above.

*C. Reject the claim based on the glycosylation application to human urine erythroprotein and apparent lack of definiteness.* Explanation: (C): At issue was whether the claim limitation having glycosylation which differs from that of human urinary erythropoietin is indefinite in view of the fact that the glycosylation of human urinary erythropoietin (uEPO) itself varies. The court determined that one must know what the glycosylation of uEPO is with certainty before one can determine whether the claimed glycoprotein has a glycosylation different from that of uEPO. Because the specification did not direct those of ordinary skill in the art to a standard by which the appropriate comparison could be made, the court held that the claims of the patent requiring glycosylation which differs invalid as indefinite under 112, ¶2. See MPEP 2173.05(b).

*In the case filed by Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 65 USPQ2d 1385 (Fed. Cir. 2003), the court considered the following representative claim from U.S. Patent No. 5,547,933: A non-naturally occurring erythropoietin glycoprotein product having the in vivo biological activity of causing bone marrow cells to increase production of reticulocytes and red blood cells and having glycosylation which differs from that of human urinary erythroprotein. How should the patent examiner working for the USPTO respond to this claim? Note: The glycosylation of human urinary erythropoietin (uEPO) itself varies.* *A* Reject the claim for being too broad. *B* Allow the claim given the apparent specific application of the erythoprotein-enabled reagent used in a diagnostic capacity. *C* Reject the claim based on the glycosylation application to human urine erythroprotein and apparent lack of definiteness. *D* Allow the claim based on the novel application of a protein based binding site to its use in treating human urine erythroprotein-borne infections. *E* None of the above.

*B. Reject the claim since it does not define sufficient and/or necessary structure to be allowed under the guidance contained in 74618 Federal Register / Vol. 79, No. 241 / Tuesday, December 16, 2014 / Rules and Regulations regarding 35 USC 112 and indefinite under 35 USC 112 ¶ 2.* Explanation: Analysis: The claim limitation invokes 112 ¶ 6, therefore the next step in the analysis is to determine if the specification discloses the corresponding structure, material, or acts in accordance with 112 ¶ 6. The description of the ACM does not describe a structure. Instead the ACM disclosure is simply an abstraction that describes the function of controlling access to course materials, which is performed by an undefined component of the system. The ACM is essentially a black box that performs a recited function. The specification is devoid of any structure that the ACM utilizes to perform the assigning function. The relevant disclosure regarding the ACM only describes an outcome, and not a means for achieving that outcome. Failure to describe the corresponding structure, by which the ACM creates an access control list, captures all possible means for achieving that end, i.e. pure functional claim language. The fact that one of ordinary skill could carry out the recited function in a variety of ways is precisely why claims written in means-plus-function form must disclose a particular structure that is used to perform the recited function. Accordingly, the failure to disclose a structure corresponding to the means for assigning renders the claim indefinite. ANSWER: (B) The claim is considered to be indefinite under 112 ¶ 2 because the disclosure only provides a restatement of the function and the intended outcome of the function and does not disclose the necessary corresponding structure.

*In the case of Blackboard, Inc., v. Desire2Learn Inc., 574 F.3d 1371 (Fed. Cir. 2009) U.S. Patent No. 6,988,138 (the 138 patent) The claimed subject matter is drawn to a system and methods for implementing education online. All the claims are at issue with the relevant claim language of independent claim 1 as follows: . . . means for assigning a level of access to and control of each data file based on a user of the system's predetermined role in a course; . . . Corresponding structure is disclosed in the specification as follows: Access control manager 151 creates an access control list (ACM) for one or more subsystems in response to a request from a subsystem to have its resources protected through adherence to an ACM. Education support system 100 provides multiple levels of access restrictions to enable different types of users to effectively interact with the system (e.g. access web pages, upload or download files, view grade information) while preserving confidentiality of information. 138 patent, col. 9, ll. 37-45. Issue: Does the disclosure of an access control manager (ACM) provide support for the means for assigning limitation of claim 1 to satisfy the corresponding structure, material or acts requirement of 112 ¶ 6 to avoid an indefiniteness rejection? * *A* Recognize that Access Control Lists may read on the more broadly defined use access control lists defined in the standard OSI seven layer computer networking model section describing Layer Two of the standard and reject the claim. *B* Reject the claim since it does not define sufficient and/or necessary structure to be allowed under the guidance contained in 74618 Federal Register / Vol. 79, No. 241 / Tuesday, December 16, 2014 / Rules and Regulations regarding 35 USC 112 and indefinite under 35 USC 112 ¶ 2. *C* Allow the claim since the use of an Access Control Manager to manage a Access Control List is a novel application contained in embedded managed networking. *D* Reject the claim since the use of an Access Control Manager has been already anticipated under Access Control Manager, found in US Patent 20150089625 A1 as well as being indefinite under 35 USC 112 ¶ 6. *E* Allow the claim since the definition contained in an Access Control Manager previously filed and issued as US Patent 20150089625 A1 do not fully anticipated the scope of the more generalized use of a Access Control List as defined in this application.

*A. Award the senior infringing standing to Sugano recognizing that even though certain sequencing had not been completed, Sugano Japanese application contained a more complete definition of the transcriptional coding that was missing in the Fiers application as contained in the the Fliers filing.* Explanation: The issue before the court was whether the Board properly granted priority to Sugano. The Federal Circuit affirmed the Boards decision. The count did not actually recite a single means, and there was no issue concerning intent to invoke 112, ¶ 6. However, the court analogized the count to a single means claim [b]ecause the count at issue purports to cover all DNAs that code for β-IF. Thus, like an actual single means claim, the count in Fiers fails to comply with 112, ¶1. Here, the court explained that the claim failed to comply with the written description requirement of 112, ¶1. This is because the claim purports to cover all DNAs that are means of coding for the recited polypeptide, when the supporting written description can at best disclose certain specific DNA means. With regard to Revels application, the court stated that [c]laiming all DNAs that achieve a result without defining what means will do so is not in compliance with the description requirement; it is an attempt to preempt the future before it has arrived.

*In the case of Fiers v. Revel, 984 F.2d 1164, 25 USPQ2d 1601 (Fed. Cir. 1993) the practitioner presented the following Interference Count: A DNA which consists essentially of a DNA which codes for a human fibroblast interferon-beta polypeptide. Background: In a three-way interference proceeding involving Sugano, Fiers, and Revel, the Board had awarded priority to Sugano. The Board had found that Fiers had not proved conception of the invention prior to his British filing date because despite evidence of an enabling disclosure, Fiers had not actually isolated and sequenced a DNA coding for human fibroblast interferon-beta polypeptide (βIF). Similarly, the Board had determined that Revel was not entitled to rely on the filing date of his Israeli application because it did not contain a complete written description of a DNA coding for β-IF. Suganos Japanese application, however, disclosed the complete nucleotide sequence of a DNA coding for β-IF and a method for isolating that DNA. What would have been to correct reply for the examiner to reply to the practitioner on this claim? * *A* Award the senior infringing standing to Sugano recognizing that even though certain sequencing had not been completed, Sugano Japanese application contained a more complete definition of the transcriptional coding that was missing in the Fiers application as contained in the the Fliers filing. *B* Overrule the preliminary findings of the Technical Center that failed to award Revel an earlier filing date that should have been properly attributed based on their compliant coding of β-IF. *C* Reply with a first rejection citing prior art that were expressed on the human fibroblast interferon-betta polypeptide by investigating prior art in transcriptional factors regulating recombinant proteins found only in human β-IF chains. *D* Direct all parties to file for a derivation proceeding since the application was filed before Sep 16, 2012. *E* Allow the Sugano application to issue, but award Fiers with standing to complete prosecution of their application in accordance with pre-AIA rules.

*B. Reject the claim based on guidance defined in 2100.* Explanation: (B) At issue was the definiteness of the claim term melting point elevation (MPE). According to claim 1, the polyethylene terephthalate (PET) yarn produced by the claimed process must fall within the specified MPE range recited in step (C). The court determined that a sample of PET yarn must be prepared in order to measure the MPE and, depending upon which sample preparation method is used, the calculated MPE for a given sample can vary greatly. The court found that the intrinsic record fails to resolve the ambiguity with respect to a required sample preparation method because [t]he claims, written description, and prosecution history do not mention the different sample preparation methods or provide sufficient clues to discern which methods are acceptable. The court held the claim indefinite under 112, ¶2.

*In the case of Hearing Components, Inc. v. Shure Inc., 600 F.3d 1357, 94 USPQ2d 1385 (Fed. Cir. 2010) the court found the following Representative Claim (U.S. Patent No. 5,630,976): A process for the production of a drawn polyethylene terephthalate yarn which translates to a high tenacity dimensionally stable tire cord, comprising: (A) extruding a molten melt-spinnable polyethylene terephthalate having an intrinsic viscosity of 0.8 or greater through a shaped extrusion orifice having a plurality of openings to form a molten spun yarn, (B) solidifying the spun yarn gradually by passing the yarn through a solidification zone which comprises (a) a retarded cooling zone and (b) a cooling zone adjacent said retarded cooling zone wherein said yarn is rapidly cooled and solidified in a blown air atmosphere, (C) withdrawing the solidified yarn at sufficient speed to form a crystalline, partially oriented yarn with a crystallinity of 3 to 13% and a melting point elevation of 2º to 10º C., and (D) hot drawing the yarn to a total draw ratio between 1.5/1 and 2.5/1. What should the examiner do?* *A* Allow the claim using guidance defined in 74618 Federal Register / Vol. 79, No. 241 / Tuesday, December 16, 2014 / Rules and Regulations. *B* Reject the claim based on guidance defined in 2100. *C* Reject the claim since the field describing terephthalate is well understood and this would considered old hat to one highly skilled in the art since this type of yarn can be readily found in most home improvement stores. *D* Allow the claim using a new and novel application of terephthalate. *E* None of the above

*E. Accept and allow the claim because "POL regulator" was well-known to those having skill in the art.* Explanation: The court determined that the intrinsic record supported the district courts construction of the claim term POL regulator to mean: a dc/dc switching voltage regulator designed to receive power from a voltage bus on a printed circuit board and adapted to power a portion of the devices on the board and to be placed near the one or more devices being powered as part of a distributed board-level power system. The court held that, here, the term POL regulator was not indefinite because the intrinsic evidence of the patent supports that POL regulators are well known devices whose locations and functions relative to other components in the power system are understood by those of ordinary skill in the art. Thus, because a person having ordinary skill in the art would know where to place the POL regulator and how to use it, the court found the claim term POL regulator not indefinite under 112, ¶2. See MPEP 2173.02 Take away:The Federal Circuit rejected the claim being made that the term POL regulator was indefinite. The mere difficulty in construing a claim does not make it indefinite, as long as a construction can be reached which comports with the requirements of 35 U.S.C. 112, ¶2. Here, the claim term was not indefinite because the intrinsic evidence indicated that the subject device was well-known, and that a person of ordinary skill in the art would understand the function of the device and how to use it.

*In the case of Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 94 USPQ2D 1241 (Fed. Cir. 2010) the examiner must address the following Representative Claim (U.S. Patent No. 7,000,125): 1. A power control system comprising: a plurality of point-of-load (POL) regulators; at least one serial data bus operatively connecting said plurality of POL regulators; and a system controller connected to said at least one serial data bus and adapted to send and receive digital data to and from said plurality of POL regulators; wherein, programming, control and monitoring information is carried on said at least one serial data bus between said system controller and said plurality of POL regulators. The examiner would most likely:* *A* Reject this claim, because linear and switched regulators have been well defined in prior art. *B* Accept and allow this claim, since the use of point-of-load regulators allows better control over circuit regulation in sensitive circuits when implemented using highly regulated Class D devices further defined in dependent claim 3. *C* Reject this claim based on guidance contained in 74618 Federal Register / Vol. 79, No. 241 / Tuesday, December 16, 2014 / Rules and Regulations. *D* Reject this claim citing indefiniteness, per MPEP 2173.02. *E* Accept and allow the claim because "POL regulator" was well-known to those having skill in the art.

*A. Accept the claim based on the substantially equal to language contained in the claim.* Explanation: (A) The court found the claim language substantially equal to not indefinite under 112, ¶2. The court stated, Definiteness problems often arise when words of degree are used in a claim. That some claim language may not be precise, however, does not automatically render a claim invalid. When a word of degree is used the district court must determine whether the patents specification provides some standard for measuring that degree. In this case, the trial court found that an expert would know the limitations of the claims because the specification clearly sets forth, for example, that the divider blocks are intended to absorb the weight of overhead loads.

*In the case of Seattle Box Co., Inc. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 221 USPQ 568 (Fed. Cir. 1984) the Court rendered a decision on the following: Representative Claim (U.S. Patent No. Re. 30,373): A shipping bundle formed of a plurality of lengths of pipe of a common size, comprising: a base formed of a first plurality of transverse sleepers located in spaced-apart parallel arrangement; a tier of pipe lengths resting on said base, adjacent pipe lengths of said tier being separated by blocks in transverse series, each block having opposed concavities substantially embracing the curved sides of said adjacent pipe lengths; each of said series of blocks being located to stand on one of said sleepers and being of a height substantially equal to or greater than the thickness of the tier of pipe lengths; a second plurality of sleepers, each traversing said pipe tier in overlying alignment with a sleeper of said first plurality, the sleepers of said second plurality being supported on the series of separating blocks; and a bundling strap tightly encircling each sleeper of said first plurality, the separating blocks resting thereon, and the respective overlying sleeper The examiner performed a very thorough search of prior art and uncovered that: The claimed invention relates to packaging oil pipes, where a tier of pipes are placed across parallel wooden sleeper beams, and wooden spacer blocks ensure that adjacent pipes remain separated. To prevent the weight of the upper pipes from crushing the lower pipes, the spacer blocks are made with a height at least equal to the pipes diameter such that they absorb most of the weight of the overhead load. What would be the most correct response for the examiner to undertake when reviewing this claim? * *A* Accept the claim based on the substantially equal to language contained in the claim. *B* Reject the claim based on the substantially equal to language contained in the claim. *C* Accept the claim given that sleeper beams have been weal known among those highly skilled in the construction field. *D* Reject the claim given that sleeper beams have been well known among those highly skilled in the construction field. *E* None of the above.

*C. the claims should be found invalid for non-compliance with the enablement requirement of 112 ¶1.* Explanation: ANSWER (C): The court stated that [b]ecause the asserted claims are broad enough to cover both movies and video games, the patents must enable both embodiments and that [e]ven if the claims are enabled with respect to video games"an issue we need not decide"the claims are not enabled if the patents do not also enable for movies. The court determined that the asserted claims provide for the ˜integration or ˜substitution of a visual or audio ˜user image in place of a ˜pre-defined character image or ˜character function within a ˜presentation such as a motion picture, but determined that the patent specification does not teach how the substitution and integration of a user image would be accomplished in movies. The court agreed with the district court that the patent does not teach how the IAIS would perform such necessary steps in movies because ˜[m]ovies do not have easily separable character functions, as video games do, and the patent does not explain how the IAIS either selects the character functions to be substituted for a user image or intercepts signals in order to effectuate the substitution. Further, the court noted that the accused infringers two experts explained that one skilled in the art would not be able to take the teachings regarding video games and apply them to movies because movies and video games are technically different and that the analysis techniques described in the specification for identifying character functions or intercepting character signals have no relevance to movies. Conclusion: The court held the asserted claims invalid for non-compliance with the enablement requirement of 112 ¶1.

*In the case of Sitrick v. Dreamworks, LLC, 516 F.3d 993, 85 USPQ2d 1826 (Fed. Cir. 2007) Representative Claim (U.S. Patent No. 6,425,825 (the 825 patent) the examiner is overruled by the following decision issued by the Federal Court explaining: 1. A system comprising: a source of a first video image signal representative of a plurality of background images of which at least two of which are comprised of at least one common predetermined character function therewithin having a recognizable video presentation within the background images; a source of a user image signal representative of a user image; means for selecting one predetermined character functions as a selected predetermined character function within the respective background images; means for mapping the user image to the selected predetermined character function; apparatus for providing an integrated video output wherein the user image appears integrated into the respective background images in place of the respective recognizable video presentation for the selected character function responsive to the mapping of the selected predetermined character function to the user image signal. Background: The 825 patent is directed to integrating a user audio signal or visual image into a preexisting video game or movie. The asserted patent claims were interpreted as including both video games and movies, and the issue was whether the movie embodiment (i.e., substitution or integration of user images in movies) was enabled. The court explained that the patent specification describes the ˜integration or ˜substitution as being performed by an ˜Intercept Adapter Interface System (IAIS) and that, in a video game system, the IAIS functions to reconfigure signals corresponding to character functions by substituting the user image for the predefined character image. Question: Is the full scope of the asserted claims of the 825 patent as covering both movies and video games enabled?* *A* the claims should be found invalid for non-compliance with the 112 ¶ 6 *B* the claims should be found invalid for non-compliance with the 112 ¶1. *C* the claims should be found invalid for non-compliance with the enablement requirement of 112 ¶1. *D* the claims should be valid for compliance with the requirements of 112 ¶ 2. *E* the claims should be valid for compliance with the requirements of 112 ¶ 1.

*B. Yes, do not reject the claim because the specification sufficiently describes the structure of the method of circulating air.* Explanation: The claim limitation invokes 112 ¶ 6, therefore the next step in the analysis is to determine if the specification discloses the corresponding structure, material, or acts in accordance with 112 ¶ 6. The expressly claimed function for the relevant means-plus-function limitation is the circulation of air and NOT the recirculation of air through the reel. The multiple recitations of structure in the specification that link to the function of circulating air through the reel meet the requirement of 112 ¶ 6 to disclose corresponding structure. Thus, these relevant portions of the specification support the conclusion that the air circulation means should not be limited to structure capable of performing the un-recited function of recirculation. Claim 3 recites a separate and distinct function (i.e., re-circulating), which is not recited in claim 1. Accordingly, the air circulation means of claim 1 should be limited to structure for performing the recited function of circulating air, and not include structure that performs the additional function of recirculation, as it is expressly recited in dependent claim 3 and thus not found in claim 1. ANSWER: (B): The claim is definite under 112 ¶ 2 because the disclosure provides support for a corresponding structure that circulates air. To require a corresponding structure to re-circulate the air would be improper because that function is not expressly recited in the means-plus-function limitation, is not linked to the means for circulating air, and would impermissibly import a limitation from claim 3 into claim 1.

*In the case of Wenger Mfg, Inc., v. Coating Machinery Sys., Inc., 239 F.3d 1225 (Fed. Cir. 2001) U.S. Patent 5,100,683 (the 683 patent) the claimed subject matter is drawn to a method and apparatus for coating and drying food products. The relevant claim language at issue of independent claim 1 is as follows: . . . means for selectively inclining said reel with said inlet elevated relative to said outlet; air circulating means associated with said dryer housing for circulating air through said reel, . . . Claim 3. An apparatus for coating and drying a food product as set forth in claim 2 including means for exhausting a first portion of said air received in said plenum and re-circulating a second portion of said air back into the interior of said reel. The written description of the specification supports the means-plus-function recitation of claim 1 as noted below: The specification discloses the function of circulating in the context of drawing air through the reel in order to dry the food product, and discloses recirculation as a separate function involving the return of a portion of the drying air back into the reel. In the summary of the invention, the specification states that the reel is rotatable and permits the circulation of drying air there through. 683 patent, col. 1, ll. 56-58. The specification further states that the product is presented as a tumbling bed which is agitated as it passes through the reel with drying air circulated there around. Id. at col. 1, l. 67 to col. 2, l. 1. In the next paragraph, the specification then explains that in preferred forms, the housing is configured to draw additional air through the openings at each end of the reel whereby both fresh and re-circulating air is introduced into the reel. Id. at col. 2, ll. 4, 11-14. Later, in describing the preferred embodiment, the specification states that the circulating component 22 and exhaust fan 122 create positive air flow, which causes the air to flow in a substantially closed circuit through the housing. Id. at col. 5, ll. 30-33. In the preferred embodiment, after the air is drawn from the interior of the reel into the housing, air may either be exhausted from the housing or returned back to the reel for recirculation. Wenger at 1234-35. Issue: Does the disclosure that supports the claimed air circulation means also have to disclose and link to a corresponding structure that re-circulates air to properly support the claimed function in accordance with the requirements of 112 ¶ 6 and avoid an indefiniteness rejection?* *A* Yes, is sufficiently distinct application of a method of circulating in the context of drawing air. *B* Yes, do not reject the claim because the specification sufficiently describes the structure of the method of circulating air. *C* No, reject the claim even though the examiner can cite sufficient invocation of 112 ¶ 6, upon further examination and the Slim-Jim method of recalculating recalculated air introduces sufficient vagueness in language further defined in 112 ¶ 2 to offer allowance of this application. *D* No, since Slim-Jim has been putting-out similar product using a substantially equivalent process for processing food by-products allow this claim to pass. *E* None of the above is true.

*C. Reject the claim based on possible vagueness and cite indefiniteness in the reply.* Explanation: (C): The court found the claim indefinite under 112, ¶2. The court found the claim language inherently inconsistent with the summary of the description, definitions and examples set forth in the specification. In particular, the court stated, As used and defined in the specification, and unmodified by other terminology, an ˜opaque finish is a flat-appearing finish which is not obtained when an alkali metal silicate is used as a sealant. Indeed, the latter sealant is said to produce a glazed or porcelain-like finish having a white coloring. The claims, on the other hand, specifically call for sealing the oxide surface with an alkali silicate in order to ultimately obtain an ˜opaque appearance. (emphasis added). The court further stated that [n]o claim may be read apart from and independent of the supporting disclosure on which it is based, and [t]he result is an inexplicable inconsistency within each claim requiring that the rejection under 35 U.S.C. 112 on grounds of indefiniteness be sustained. See MPEP 2173.03.

*In the case of re Cohn, 438 F.2d 989, 169 USPQ 95 (CCPA 1971) the following claim was considered by the Federal Court: wherein challenged claiim (first appearing in application serial No. 281,049, filed May 16, 1963) read: 1. The method of producing on a surface of aluminum a durable opaque finish comprising the steps of providing on the surface of the aluminum a porous oxide coating, then sealing said coating by treatment with a solution of an alkali silicate, and then treating the sealed surface with a corroding solution until the metallic appearance of the surface is supplanted by an opaque appearance. How should the examiner responsible for this examination address this claim?* *A* Allow the claim as is without any amendments because it appears to be a novel application of an aluminum porous oxide coating that may be useful in reducing numerous carbon based emissions. *B* Reject the claim for being a non-novel application of an aluminum porous oxide coating. *C* Reject the claim based on possible vagueness and cite indefiniteness in the reply. *D* Accept the claim given that there is a market need for using more porous oxide coating given their acceptance potential to enabling green technology proponents per the latest findings contained in USPTO patent 6861002 B2 Reactive compositions for fluid treatment. *E* Any of the above, answers (A), (B), (C) and (D) would be considered equally acceptable.

*C. Allow the claim using guidance contained in defined in 74618 Federal Register / Vol. 79, No. 241 / Tuesday, December 16, 2014 / Rules and Regulations.* Explanation: The court determined that claim 5 would not be indefinite under 112, ¶2 if the phrase at the separation in independent claim 1 were amended to at a separation. The figures as originally filed show as elements the upright sections of the wire legs forming segments. The court found that the clause ˜welded to said wire legs at the separation does not require further antecedent basis in claim 1, for a person skilled in the field of the invention would understand the claim when viewed in the context of the specification. The court noted that the BPAI conceded that the claim would be definite if it recited at a separation. The court therefore reversed the indefiniteness rejection subject to this potential amendment on remand to the USPTO. See MPEP 2173.05(e).

*In the case re: Skvorecz, 580 F.3d 1262, 92 USPQ2d 1020 (Fed. Cir. 2009) the court found the following Representative Claim (U.S. Patent No. 5,630,976): How should have the examiner addressed this claim? A wire chafing stand comprising a first rim of wire steel which forms a closed geometrical configuration circumscribing a first surface area, and having at least two wire legs with each wire leg having two upright sections interconnected to one another in a configuration forming a base support for the stand to rest upon with each upright section extending upwardly from said base support to from an angle equal to or greater than 90 with respect to a horizontal plane through said base support and being affixed to the first rim adjacent one end thereof and further comprising a plurality of offsets located either in said upright sections of said wire legs or in said first rim for laterally displacing each wire leg relative to said first rim to facilitate the nesting of a multiplicity of stands into one another without significant wedging. A wire chafing stand as defined in claim 1 wherein said plurality of offsets are welded to said wire legs at the separation of the upright sections into segments.* *A* Reject the claim base on ruling contained in 74618 Federal Register / Vol. 79, No. 241 / Tuesday, December 16, 2014 / Rules and Regulations. *B* Breech the claim citing the fact that improvements directed to wire chafing elements have been previously cited in a prior application directed to an angle of less than 90 degrees. *C* Allow the claim using guidance contained in defined in 74618 Federal Register / Vol. 79, No. 241 / Tuesday, December 16, 2014 / Rules and Regulations. *D* Allow the claim given that the claim(s) for sufficiently containing a unique use of an adjoining design containing adjoining wire abutting designs in excess of 90 degrees are sufficiently unique and definitive. *E* Reject the claim outright for the simple audacity of trying to use the patent systems to attempt to further bypass wire chafing designs by employing the use of nearly 90 degrees that are not acknowledged in the field.

*C. Allow the claim based on Claim1, which reads as: A method for providing voice dynamics of human utterances converted to and represented by text within a data processing system, said method comprising...: The scope of the claim contained in Claim 1 is broad enough to overcome a rejection based on a further reading 35 USC 112.* Explanation: Analysis: The claim limitation invokes 112 ¶ 6, therefore the next step in the analysis is to determine if the specification discloses the corresponding structure, material, or acts in accordance with 112 ¶ 6. The expressly claimed function for the relevant means-plus-function limitation is the outputting of data to a word processing program and NOT the function of outputting data alternatively to a plurality of word processing programs. Although the output means must be capable of outputting data to more than one program, the claim does not suggest the requirement that the means do so alternately. The disclosure in general indicates that the invention is capable of outputting data to more than one program, e.g. Word®, Word Perfect® etc., but to read this portion of the disclosure into the means for outputting function of the means-plus-function limitation is improper. Removing the extra functional limitation of alternately the specification does contain structure corresponding to the output means clause of claim 60. The 273 Patent col.7 ll.3-7 and figure 3 discloses a dynamic data exchange (DDE) protocol that performs and link the function to sufficient corresponding structure to one of ordinary skill in the relevant art. With the proper parameters of the claim now established, one of ordinary skill in the relevant art would understand the bounds of the claim when read in light of the specification. Accordingly, claim 60 is definite. ANSWER: (C) The claim is considered definite under 112 ¶ 2 because the disclosure provides support for a corresponding structure that outputs the data, and links the output function to a known corresponding structure. Requiring the corresponding structure to alternatively output data to a plurality of programs would be misconstruing the disclosure and improperly importing into the means-plus function claim limitation a function that is not expressly set forth in claim. Following the guidance contained in (E) is never a bad choice.

*In the matter of All Voice Computing PLC v. Nuance Commcns, Inc., 504 F.3d 1236 (Fed. Cir. 2007) U.S. Patent No. 5,799,273 (the 273 patent) The claimed subject matter is drawn a data processing used in the output from a speech recognition engine. The relevant claim language of independent claim 60 is as follows: . . . output means for out-putting the recognized words into at least any one of the plurality of different computer-related applications to allow processing of the recognized words as input text; . . . The written description of the specification discloses the following in support of the means-plus function recitation of claim 60: The speech recognition interface application 12 receives the recognized word at the head of the alternative list shown in FIG. 3 and outputs the word using the dynamic data exchange (DDE) protocol in the Windows operating system. 273 Patent col.7 ll.3-7. Issue: Does the disclosure that supports the claimed means for outputting also have to disclose and link to a corresponding structure that must alternately output data to a plurality of different word processing or other application programs to satisfy the requirements of 112 ¶ 6 and avoid an indefiniteness rejection?* *A* Disallow the claim because claiming to output[ting] data to more than one program does not sufficiently disclose a means or structure describing a method of performing a machine transformation of said data. *B* Allow the claim under the broadest interpretation of 112 ¶ 2. *C* Allow the claim based on Claim1, which reads as: A method for providing voice dynamics of human utterances converted to and represented by text within a data processing system, said method comprising...: The scope of the claim contained in Claim 1 is broad enough to overcome a rejection based on a further reading 35 USC 112. *D* Reject the claim since the use of capture and the application of sender voice dynamics to an enhance[d] communication system in a speech-to-text environment was previously cited as established prior art in previously established expert testimony proffered in the field regarding the capture of sender voice dynamics and is further prohibited to be considering based on the prior art established in US 6175820 B1. *E* Go home and relax, then come back fresh and study some more of this tomorrow.

*A. Allow the claim per the broadest interpretation available under 112, ¶2.* Explanation: Background: The court explained that the patent claims are directed to a compound in which a nitrogeneous base B is covalently attached, either directly or through a linkage group, to a chemical moiety A. The court found that the linkage group is not recited in structural terms but, rather, functionally in a not interfering substantially capacity regarding hybridization. Analysis: The court examined the intrinsic evidence (i.e., the claims, specification and prosecution history) to determine whether a person of ordinary skill would understand when a linkage group substantially interferes with hybridization. The court determined that the claims themselves provide at least some guidance as to how much interference will be tolerated because [a] dependent claim in both patents specifies that the linkage group has a particular structure (-CH=CH-CH2-NH-) and [a] person of ordinary skill would presume that a structure recited in a dependent claim will perform a function required of that structure in an independent claim. The court also determined that [t]he specification provides additional examples of suitable linkage groups, including some criteria for selecting them. For example, the court explained that the specification provides that ˜[i]t is even more preferred that the chemical linkage group be derived from a primary amine, and have the structure -CH2-NH-, since such linkages are easily formed utilizing any of the well known amine modification reactions. The court also determined that the specification teaches that the polynucleotides ˜thermal denaturation profiles and hybridization properties can be used to measure the degree to which a linkage group interferes with hybridization. Additionally, the court determined that the prosecution history was helpful because a declaration under 37 C.F.R. 1.132, submitted during prosecution, listed eight specific linkage groups that were declared as not substantially interfering with hybridization or detection. ANSWER: (A) The court stated that [b]ecause the intrinsic evidence here provides ˜a general guideline and examples sufficient to enable a person of ordinary skill in the art to determine [the scope of the claims], the claims were not indefinite under 112, ¶2 even though the construction of the term ˜not interfering substantially defines the term without reference to a precise numerical measurement. The court further stated that [w]hen deciding whether a particular linkage group is or is not ˜substantially interfering with hybridization, a person of ordinary skill would likely look to the thermal denaturation profiles and hybridization properties (including Tm) of the modified nucleotide, to see whether they fall within the range of exemplary values disclosed in the intrinsic evidence. See MPEP 2173.05(b).

*In the matter of Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 94 USPQ2d 1321 (Fed. Cir. 2010) the following claim was ruled upon and decided upon under the Representative Claim (U.S. Patent No. 5,328,824): A method of detecting the presence or absence of a nucleic acid in a sample which comprises the steps of: (a) contacting under hybridizable conditions said sample with at least one compound comprising the structure: wherein each of B' and B" represents a purine, 7-deazapurine, or pyrimidine moiety covalently bonded to the C1'-position of the sugar moiety, provided that whenever B' or B" is purine or 7deazapurine, the sugar moiety is attached at the N9-position of the purine or 7-deazapurine, and whenever B' or B" is pyrimidine the sugar moiety is attached at the N1-position of the pyrimidine; wherein B represents 7-deazapurine or pyrimidine moiety covalently bonded to the C1'-position of the sugar moiety, provided that whenever B is 7-deazapurine, the sugar moiety is attached at the N9position of the 7-deazapurine, and whenever B is pyrimidine the sugar moiety is attached at the N1position of the pyrimidine; wherein A comprises at least three carbon atoms and represents at least one component of a signaling moiety capable of producing a detectable signal; wherein B and A are covalently attached directly or indirectly through a linkage group, said linkage group not interfering substantially with the characteristic ability of said compound to hybridize with said nucleic acid or of A to be detected; wherein if B is 7-deazapurine, A is attached to the 7-position thereof, and if B is pyrimidine, A is attached to the 5-position thereof; wherein m, n and p are integers, provided that m and p are not simultaneously 0 and provided further n is never 0; and wherein z represents H- or HO-; and (b) detecting said compound or compounds so as to detect said nucleic acid.* *A* Allow the claim per the broadest interpretation available under 112, ¶2. *B* Disallow the proposed claim as defined by the broadest reading defined by 112, ¶2. *C* Allow the claim considering that this is an potential life-saving technology in the field of evolving research contained in the hybridizable pyrimide compound and apply for minimal fee considerations. *D* Disallow the claim because this is a derivative form of hybridizable compounds that recites previously established work in the field of said compositions. *E* All of the above.

*D. No, the claim should be rejected for indefiniteness; the examiner should cite35 USC 112 ¶ 2.* Explanation: The claim limitation invokes 112 ¶ 6, therefore the next step in the analysis is to determine if the specification discloses the corresponding structure, material, or acts in accordance with 112 ¶ 6. The 505 patent discloses minimal information about the structure corresponding to this claim term other than software that generates data for the information database, which is merely a restatement of the function. For a computer-implemented means-plus-function claim limitation where the disclosed structure is a computer programmed to implement an algorithm, the patent must disclose, at least to the satisfaction of one of ordinary skill in the art, enough of an algorithm to provide sufficient structure under 112 ¶ 6. Patentee may express that algorithm in any understandable terms including as a mathematical formula, in prose, flow chart, or in any other manner that provides sufficient structure. Simply reciting software without providing any detail about the means to accomplish the function is insufficient under the statute. By not providing any corresponding structure other than stating software executed by a CPU, one of skill in the art simply cannot perceive the metes and bounds of the invention, as the disclosure does not meet the minimal disclosure requirements to make the claims definite. Accordingly, the failure to disclose a structure corresponding to the means for assigning renders the claim indefinite. ANSWER: (D) The claim is considered indefinite under 112 ¶ 2 because the disclosure only provides the disclosure of software without providing some detail about the means to accomplish the function is not enough to disclose the necessary corresponding structure as required by statute.

*In the matter of Finisar Corp. v. The DirecTV Group, Inc., 523 F.3d 1323 (Fed. Cir. 2008) U.S. Patent No. 5,404,505 (the 505 patent) The claimed subject matter is drawn to a satellite based information broadcasting system which provides a large number of subscribers access to broadcast information. The relevant claim language of independent claim 1 is as follows: . . . a set of one or more computer memory devices on which is stored an information database; database editing means, coupled to said one or more computer memory devices, for generating a hierarchically arranged set of indices for referencing data in said information database, including distinct indices for referencing distinct portions thereof, and for embedding said indices in said information database . . . Corresponding structure is disclosed in the specification as follows: As shown in FIG. 1, the program supplier station 102 includes the aforementioned database 112, which is typically stored on a large number of high density magnetic disk devices. The program editing software 132 on the central program supplier station 102 tags all the information in the database 112 with indices (each of which contains a packet ID plus additional information) so as to form a single hierarchical structure that encompasses the entire information database. More specifically, software 132 (executed by CPU 130) generates a hierarchical set of indices referencing all the data in the information database 112 and embeds those indices in the information database. 505 patent, ll. 28-40 Issue: Does the disclosure of software that generates data for the information database, provide the support needed for the database editing means limitation of claim 1 to satisfy the corresponding structure, material or acts requirement of 112 ¶ 6 to avoid an indefiniteness rejection?* *A* Yes, since there is sufficient incorporation of a machine transformation performed by the central program supplier station referenced in supplied drawing in element [102]. *B* No, the claim should be rejected for indefiniteness; the examiner should cite 35 USC 112 ¶ 6. *C* Yes, by providing with sufficient description of database editing means, the claim provides sufficient description for editing said database. *D* No, the claim should be rejected for indefiniteness; the examiner should cite35 USC 112 ¶ 2. *E* Yes, a single hierarchical structure that encompasses the entire information database passes the machine transformation requirement contained in 74618 Federal Register / Vol. 79, No. 241 / Tuesday, December 16, 2014 / Rules and Regulations and Bilski et al.

*C. This claim must be allowed if spikeless connectors were known at all in the prior art.* Explanation: ANSWER (C): The applicant did not present spikeless connectors in his original disclosure (i.e., specification or original claims), so adding them later on would be addition of new matter without support in the written description. Merely having a prior art reference mention spikeless connectors (in any context) is not enough to show that it would be known to a PHOSITA that the spikeless connectors were inherently included in the original disclosure. Analysis: The court interpreted the spikeless claims as being broader than the spike claims because the spikeless claims refer to medical valves generically covering those valves that operate with a spike and those that operate without a spike. The court noted, however, that the specification describes only medical valves with spikes. The court rejected the patentees argument that the figures and descriptions that include spikes somehow demonstrate that the inventor possessed a medical valve that operated without a spike. Rather, the court determined that [b]ased on this disclosure, a person of skill in the art would not understand the inventor ¦ to have invented a spikeless medical valve. Specifically, patentee argued that a person of ordinary skill in the art would recognize that the specification discloses a preslit (or precut) seal that would permit fluid transmission without the piercing of a spike. The court disagreed, explaining that [i]n this preslit trampoline seal embodiment, compression of the preslit seal by a medical implement opens the slit to create a fluid pathway and decompression of the seal upon removal of the medical implement closes the seal and that [t]he specification describes the preslit seal as facilitating piercing and re-sealing, rather than as eliminating the need for piercing. Additionally, the court explained that [t]he fact that compression of a preslit seal would allow an opening for fluid transmission does not answer the question of whether the claimed invention nevertheless requires a spike capable of piercing the seal in preslit embodiments and that [i]t is not enough that it would have been obvious to a person of ordinary skill that a preslit trampoline seal could be used without a spike. Thus, the court determined that there was no disclosure in the patent specification describing a spikeless valve with a preslit trampoline seal.

*In the matter of ICU Med., Inc. v. Alaris Med. Sys., Inc., 558 F.3d 1368 (Fed. Cir. 2009) decided by the Federal Circuit, the Court ruled on the following Representative Claim from U.S. Patent No. 6,572,592: 35. A needleless connector valve comprising: a body including a wall structure defining an internal cavity having a proximal end and a distal end, said proximal end having an opening sufficiently large to receive a delivery end of a medical implement, the opening being adapted to receive fluid through said delivery end; and a seal which is adapted to be moved distally in the cavity into an axially compressed state upon insertion of the delivery end of the medical implement into said opening, said seal moving proximally in the cavity and returning to an axially decompressed state upon removal of said medical implement from said opening, said seal substantially completely filling said opening and presenting a generally flush surface across said proximal end of said cavity of said body when said seal is in the decompressed position, said seal having a tubular, corrugated, imperforate wall accommodating axial compression of said seal, and said seal having a preslit orifice at the proximal end of the seal, said orifice being closed to prevent fluid from flowing through said seal when said seal is in said opening, and said orifice being open to allow fluid to flow through said seal when said seal is in the compressed state. Background: The court characterized the invention as a medical valve that receives fluid from a medical implement (e.g., a syringe) without the use of an external needle. The medical implement compresses a seal on the valve to create a fluid pathway from the medical implement through the valve and into a patients IV line. The asserted claims of the patents fell into three categories: the spike claims, directed to a medical valve comprising a body, a spike, and a seal; the spikeless claims, directed to a medical valve comprising a body and a seal; and the tube claims, directed to a medical valve comprising a body, a seal, and a tube. The court referred to the second set of claims as the spikeless claims not because they exclude a medical valve with a spike but because these claims do not include a spike limitation, i.e., they do not require a spike. The court noted that the specification describes only medical valves with spikes and that the asserted spikeless claims were not filed with the original application; rather they were added years later during prosecution. (FYI: spike = needle) Which of the following is not true regarding claim 35's satisfaction of the written description requirement?* *A* A needleless connector valve should be considered invalid for non-compliance with the written description requirement of 35 USC 112. *B* The claim might be rejected if the use of a medical valve that receives fluid from a medical implement (e.g., a syringe) without the use of an external needle was mentioned in prior art. *C* This claim must be allowed if spikeless connectors were known at all in the prior art. *D* The asserted spikeless claims were not filed with the original application; rather they were added years later during prosecution. This feature should have been filed as a continuation-in-process claim and should now be rejected by the examiner for failing 35 USC 112. *E* None of the above.

*B. Yes, allow the claim since it is sufficiently different from Claim 1 in the ˜478 patent recited in (A)* Explanation: Analysis: Claim 22 is directed only to the primary frame with the magnetic structure that solves the known problem of structural frame weakness when magnetic elements are embedded into the frame. The claim does not set forth an auxiliary frame with a top mounting design to address the known stability problem exhibited by auxiliary frames in the art. Thus, claim 22, only embodies a solution to one of the two problems disclosed. Claim 22 complies with the written description requirement, because when a specification presents two different problems in the prior art, it is unnecessary that each and every claim in the patent address both problems. An applicant may frame their claims to address just one of the disclosed problems or several of the disclosed problems. The written description requirement will be satisfied as to each claim as long as the description conveys that the inventor was in possession of the invention recited in that claim. Therefore, claim 22 drawn to only a primary frame with magnetic elements is adequately supported by the disclosure to satisfy the written description requirement of 35 U.S.C. 112 ¶1. (Furthermore it is noted that Figure 3 of the 545 patent does disclose each and every element of a primary frame as claimed in claim 22, and does not include the auxiliary frame.) ANSWER: (B): The claim is compliant with the written description requirement. When a specification sets out two or more different problems present in the prior art, it is unnecessary for each and every claim in the patent to address all of the disclosed problems.

*In the matter of Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., 563 F.3d 1358, 90 USPQ2d 1733 (Fed. Cir. 2009) the court undertook a review of the following representative claim from U.S. Patent No. RE 37,545 (the '545 patent): 22. An eyeglass device comprising: a primary spectacle frame for supporting primary lenses therein and having two side portion extensions extending rearwardly therefrom and having a front side, a rear side, a top side, and a rear end, each of said rear ends pivotally coupling a leg configured to conform to a user at a distal end thereof, each of said extensions of said primary spectacle frame further having a projection attached to each of said rear sides, and a pair of first magnetic members respectively secured in said projections, said first magnetic members capable of engaging second magnetic members of an auxiliary spectacle frame so that lenses of an auxiliary spectacle frame are located in front of said primary lenses. Background: The disclosure of the 545 patent identifies two deficiencies at the time of the invention in the relevant spectacle frame art: (1) stability issues with regard to the attachment of auxiliary frames when in use; and (2) decreased strength of the primary frames when magnetic elements are embedded into the primary frame. The stability issue is due to the fact that when auxiliary lenses are attached to the frames by magnetic materials only, the auxiliary lenses more easily move downward relative to the frames and disengage from the frames when in use during exercise. 545 patent col.1 ll.26-32. The 545 invention addresses the stability issue by using an auxiliary frame that includes a top mounting mechanical interface between the primary and auxiliary frame. Id. col.2 ll.49-56. The decreased strength problem is due to the design of the prior art frames, where the magnetic materials are embedded in the frames, by excavating four or more cavities in a frame. Id. col.1 ll.33-37. In the 545 invention, magnetic members are supported by projections located at the rear/side portions of both the primary frame and the auxiliary frame. Id. col.2 ll.36-38, ll.43-44. Because the magnetic members are not embedded in the frame structure, they do not compromise the structural strength of the frame. Id. col.3 ll.24-26. Therefore the 545 patent discloses and identifies two known problems in the art and presents solutions for each problem. Issue: Does a disclosure that addresses two problems known in the art provide adequate written description support for a claim that only sets forth limitations addressing one of the two known problems in the prior art?* *A* No, and cite prior art previously described in U.S. Patent US 6364478 B1 Eyeglass device having primary and auxiliary frames with lenses and method of forming the same in which Claim I recites: An eyeglass device having a first and second pairs of lenses, comprising: a. a primary frame comprising: (i). a front portion for holding the first pair of lenses and having two opposed ends; (ii). a first temple attached to one end of the front portion and having an inside surface, an opposite outside surface, and a housing formed on the inside surface of the first temple, wherein the housing has a mouth and a bottom defining a socket therebetween to receive a magnetic member therein; and (iii). a second temple attached to the other end of the front portion and having an inside surface, an opposite outside surface, and a housing formed on the inside surface of the second temple, wherein the housing has a mouth and a bottom defining a socket there between to receive a magnetic member therein, wherein the first and second temples extend rearwardly from the front portion; and b. a auxiliary frame comprising: (i). a forward portion for holding the second pair of lenses and having two opposite ends; (ii). a first arm attached to one end of the forward portion and having a magnetic member secured thereto; and (iii). a second arm attached to the other end of the forward portion and having a magnetic member secured thereto, wherein the first and second arms extend rearwardly from the forward portion, at least one of the first and second arms of the auxiliary frame comprises: a. a body extending rearwardly from the forward portion; b. an extension projecting downwardly from the body; c. a flap projecting horizontally away from the body *B* Yes, allow the claim since it is sufficiently different from Claim 1 in the ˜478 patent recited in (A) *C* The examiner should defer to the findings contained in the decision rendered in: United States Court of Appeals for the Federal Circuit 04-1138 ASPEX EYEWEAR, INC., MANHATTAN DESIGN STUDIO, INC., CONTOUR OPTIK, INC., and ASAHI OPTICAL CO., LTD *D* No, do not allow the claim since it is not different from Claim 1 in the ˜478 patent recited in (A) *E* reject (A), (B) (C) and (D) due to impermissible hindsight cited in KSR v. Teleflex

*C. No, the claims are invalid for non-compliance with the enablement requirement of 112.* Explanation: ANSWER (E): The court stated that [b]ecause the asserted claims are broad enough to cover both movies and video games, the patents must enable both embodiments and that [e]ven if the claims are enabled with respect to video games"an issue we need not decide"the claims are not enabled if the patents do not also enable for movies. The court determined that the asserted claims provide for the ˜integration or ˜substitution of a visual or audio ˜user image in place of a ˜pre-defined character image or ˜character function within a ˜presentation such as a motion picture, but determined that the patent specification does not teach how the substitution and integration of a user image would be accomplished in movies. The court agreed with the district court that the patent does not teach how the IAIS would perform such necessary steps in movies because ˜[m]ovies do not have easily separable character functions, as video games do, and the patent does not explain how the IAIS either selects the character functions to be substituted for a user image or intercepts signals in order to effectuate the substitution. Further, the court noted that the accused infringers two experts explained that one skilled in the art would not be able to take the teachings regarding video games and apply them to movies because movies and video games are technically different and that the analysis techniques described in the specification for identifying character functions or intercepting character signals have no relevance to movies. Conclusion: The court held the asserted claims invalid for non-compliance with the enablement requirement of 112. of Sitrick v. Dreamworks, LLC, 516 F.3d 993, 85 USPQ2d 1826 (Fed. Cir. 2007)

*In the matter of Sitrick v. Dreamworks, LLC, 516 F.3d 993, 85 USPQ2d 1826 (Fed. Cir. 2007) the court ruled on the following Representative Claim (U.S. Patent No. 6,425,825 (the 825 patent)): 1. A system comprising: a source of a first video image signal representative of a plurality of background images of which at least two of which are comprised of at least one common predetermined character function therewithin having a recognizable video presentation within the background images; a source of a user image signal representative of a user image; means for selecting one predetermined character functions as a selected predetermined character function within the respective background images; means for mapping the user image to the selected predetermined character function; apparatus for providing an integrated video output wherein the user image appears integrated into the respective background images in place of the respective recognizable video presentation for the selected character function responsive to the mapping of the selected predetermined character function to the user image signal. Background: The 825 patent is directed to integrating a user audio signal or visual image into a preexisting video game or movie. The asserted patent claims were interpreted as including both video games and movies, and the issue was whether the movie embodiment (i.e., substitution or integration of user images in movies) was enabled. The court explained that the patent specification describes the ˜integration or ˜substitution as being performed by an ˜Intercept Adapter Interface System (IAIS) and that, in a video game system, the IAIS functions to reconfigure signals corresponding to character functions by substituting the user image for the predefined character image. Is the full scope of the asserted claims of the 825 patent as covering both movies and video games properly enabled?* *A* No, realizing that playback of movies that may be transported in various formats are subject to a different standard than video games which may be delivered in more limited formats. *B* No, reject the claim on the basis of 35 USC 112 6 *C* No, the claims are invalid for non-compliance with the enablement requirement of 112. *D* Yes *E* (C) and (D)

*D. Yes, allow the claim since it does not invoke limitations contained in other prior voxel-based rejections previously considered under the broadest interpretation(s) under 112 ¶ 6.* Explanation: Analysis: The claim limitation invokes 112 ¶ 6, therefore the next step in the analysis is to determine if the specification discloses the corresponding structure, material, or acts in accordance with 112 ¶ 6. The specification does not directly state that a computer or computer code is used to implement the function of reconstruction but the written description combined with the claims disclose a device that receives digital data words from a memory and data input from a user. The specification describes how the device then computes, from the received data, a current distribution by mathematical operations including a matrix inversion or pseudo inversion, and then outputs the result to a display. One of ordinary skill in the medical imaging art knows that computers are used to generate images for display by mathematically processing data, and the written description discloses specific equations to perform the function of reconstruction. While the written description does not disclose exactly what mathematical algorithm can be used to solve the equations, it does state that known algorithms can be used to solve standard equations which are known in the art. Therefore, under these circumstances, the disclosure satisfies the requirements of 112 ¶ 2. Conclusion: The claim is definite under 112 ¶ 2 because the disclosure provides sufficient structure that is clearly linked to the function of reconstruction so that one of ordinary skill in the relevant art would understand the written description to disclose corresponding structure as required by 112 ¶ 6. See MPEP 2181 II 8th Ed. Rev. 6., Sept 2007 Pages 2100-238-39. See also Aristocrat Techs. Australia Pty Ltd, v. Intl Game Tech., 521 F.3d 1328, 1335-36 (Fed. Cir. 2008) (distinguishing the facts in Dossel). The court stated that the application in Dossel provided the particular equation by which the relationship between the values of magnetic flux density and current density could be described in matrix form and that it described in great detail the components of that equation. The court clarified what it meant regarding known algorithms, stating that [f]rom the context and from reviewing the application, it is clear that the Dossel court used the term ˜algorithm in a narrow sense, referring to particular well-known mathematical operations that could be used to solve the equations disclosed in the application, and that the Dossel case provides an example of an extremely detailed disclosure of all information necessary to perform the function, except for basic mathematical techniques that would be known to any person skilled in the pertinent art. ANSWER: (D):: The claim limitation invokes 112 ¶ 6, therefore the next step in the analysis is to determine if the specification discloses the corresponding structure, material, or acts in accordance with 112 ¶ 6. The specification does not directly state that a computer or computer code is used to implement the function of reconstruction but the written description combined with the claims disclose a device that receives digital data words from a memory and data input from a user. The specification describes how the device then computes, from the received data, a current distribution by mathematical operations including a matrix inversion or pseudo inversion, and then outputs the result to a display. One of ordinary skill in the medical imaging art knows that computers are used to generate images for display by mathematically processing data, and the written description discloses specific equations to perform the function of reconstruction. While the written description does not disclose exactly what mathematical algorithm can be used to solve the equations, it does state that known algorithms can be used to solve standard equations which are known in the art. Therefore, under these circumstances, the disclosure satisfies the requirements of 112 ¶ 2.

*In the matter of described in re Dossel, 115 F.3d 942 (Fed. Cir. 1997) U.S. Patent Application Serial No. 07/543,600 application (the '600 application), now U.S. Patent 5,885,215 (the 215 patent) The claimed subject matter is drawn to a method of reconstructing the spatial current distribution in a biological object, i.e. the generation of medical images of a patient. The relevant claim language of independent issued claim 1 (Claim 8 on appeal) is as follows: . . . and means for reconstructing the current distributions of the volume elements which are situated on said surfaces on the basis of said measured values. The written description of the specification supports this means-plus-function recitation with the following disclosure: A reconstruction unit 11 reconstructs the density of the impressed current at the individual voxels Vi (1 . . . i . . . s, where s is the number of voxels on the marked surface) from the measuring values of the magnetic flux density at the various pixels at each time the same instant. Known algorithms can be used for this purpose. ˜215 patent, col. 4, ll. 5-11. Issue: Does the disclosure of specific equations to perform the function of reconstruction coupled with the disclosure that known algorithms can be used to solve those equations satisfy the corresponding structure, material or acts requirement of 112 ¶ 6 to avoid an indefiniteness rejection? * *A* No, reject the claim since the application invokes 112 ¶ 6 but should be allowed based on further analysis defined under the Examination Guidelines for evaluating 112 ¶ 2. *B* Yes, the application invokes a judicial exception under 112 ¶ 6 and upon further examination the specification does not directly state that a computer or computer code is used to implement the function of reconstruction but the written description combined with the claims disclose a device that receives digital data words from a memory and data input from a user as found in 112 ¶ 6. *C* No, reject the claim since using voxel-based parsing have been widely dismissed by leading subject matter experts since the late 1990s. based on bad science. *D* Yes, allow the claim since it does not invoke limitations contained in other prior voxel-based rejections previously considered under the broadest interpretation(s) under 112 ¶ 6. *E* No, the examiner should reject the claim since previously established science using voxel-based morphometry (VBM signaling) all involved using a voxel-wise comparison based just on the local concentration of gray matter between two groups of subjects. The data referenced in studies cited in the application do not contain statistically sufficient data sets, (which cite only two controversial studies). Reject the claim base on insufficient supporting evidence.

*C. Original claim 1 in the application refers to "a holder," and original claim 2 depends from and refers to claim 1 stating, "said holder is a hook, clasp, crimp, or tong." There is no disclosure in the specification preceding the claims in the application as filed for the holder to be a clasp, crimp, or tong.* Explanation: MPEP 2163.03, item I. Original claims constitute their own description. In re Koller, 613 F.2d 819, 204 USPQ 702 (CCPA 1980). (A) and (B) are incorrect. As stated in MPEP 2163.03, item I, "An amendment to the specification (e.g., a change in the definition of a term used both in the specification and claim) may indirectly affect a claim even though no actual amendment is made to the claim." There is no supporting disclosure in the original description of the invention for the holder to a clasp, crimp, or tong. (D) is incorrect. MPEP 2163.03, item IV. A broad generic disclosure is not necessarily a sufficient written description of a specific embodiment, especially where the broad generic disclosure conflicts with the remainder of the disclosure. Fields v. Conover, 443 F.2d 1386, 170 USPQ 276 (CCPA1970). (E) is not correct because (C) is correct.

*In which of the following situations, considered independently of each other, is the original, new, or amended claim supported in the application as filed?* *A* An amendment to the specification changing the definition of "holder" from "is a hook" to "is a hook, clasp, crimp, or tong" and no amendment is made of the claim, which uses the term "holder." The amendment is filed one month after the application was filed. There was no previous supporting disclosure in the specification of the holder being a clasp, crimp, or tong. *B* An amendment to the specification and claims changing the definition of "holder" from "is a hook" to "is a hook, clasp, crimp, or tong." The amendment is filed one month after the application was filed. There was no previous supporting disclosure in the specification of the holder being a clasp, crimp, or tong. *C* Original claim 1 in the application refers to "a holder," and original claim 2 depends from and refers to claim 1 stating, "said holder is a hook, clasp, crimp, or tong." There is no disclosure in the specification preceding the claims in the application as filed for the holder to be a clasp, crimp, or tong. *D* An amendment is filed presenting a claim to an electrical insulating device, copied from a patent for the purpose of provoking an interference. The claim refers to "nonconductive plastic holder." The application as filed contains a broad generic disclosure describing electrical insulating devices. The holder is described in the specification of the application as "conducting electricity." There is no disclosure in the specification of the holder being "nonconductive." *E* All of the above.

*C. 102(d)* Explanation: 102(d) is the correct answer. The later US filing came after the 12-month period allowed to claim foreign priority, so the issued French patent serves as prior art under 102(d). 102(b) is not valid because there was no "printed publication or patent" more than one year before the US application. The initial French application is not considered a publication. Applications are (generally) published 18 months after filing, but here the French application was allowed and issued as a French patent before 18 months. Since the date of the issued French patent was less than one year before the US application, so it does not fall under 102(b). 102(a) and (e) must be created by another, not the same inventor. 102(f) does not apply.

*Inventor Thomas filed a French Application filed on January 4, 2003. It issued as a French patent on December 5, 2003. Then he filed a US application for the same invention on April 1, 2004. Which section of 35 USC 102, if any, may be used to reject the US filing based on Thomas's earlier French filing?* *A*102(a) *B*102(b) *C*102(d) *D*102(e) *E*102(f)

*C. "In contrast to the present invention, the Deere patent calls for the use of a hormonal substance that suppresses ovulation in female deer. Deere neither discloses nor suggests the use of a non-hormonal substance that, when ingested by a male deer, is operable to suppress sexual function in the male deer, as set forth in claim 6."* Explanation: The best answer is (C). Answer (A) is incorrect because it attempts to distinguish the claim on the basis of a feature that is not recited in claim 6, i.e., the substance is interspersed throughout the salt lick. Cf. claim 8. Answer (D) similarly relies on a feature that is not set forth in claim 6, i.e., presence of substance XYZ. With regard to Answer (B), a mere conclusory statement that the claim was carefully drafted to distinguish over the prior art is unlikely to be persuasive without reference to distinguishing features set forth in the claim. NOTE: This is an actual question from a USPTO exam (April 2002); however, the answer would be the same for the AIA era.

*James Salt developed an environmentally friendly technique for controlling deer overpopulation. Briefly, Salt discovered a non- hormonal substance XYZ ("Antiagra") that efficiently suppresses sexual function in male deer with minimal side effects. Salt determined that the use of a non- hormonal substance eliminated adverse long-term health effects that may be experienced with hormonal substances. He then dissolved an effective amount of Antiagra in salt water, poured the resulting solution into a plurality of twenty-gallon tubs, and heated the tubs to evaporate the water. The resulting blocks of salt, throughout which Antiagra was evenly disbursed, were distributed in overpopulated areas during deer mating season to serve as salt licks. Stags that used the salt lick show no interest in mating, thereby lowering the pregnancy rate among does and helping to control the deer population. Salt has retained you to conduct a prior art search and, if appropriate, prepare and file a patent application. The only relevant prior art located during the prior art search is a patent to Deere that discloses a salt lick on which a hormonal substance is sprayed. A doe that uses the salt lick ingests the hormonal substance which, in turn, suppresses ovulation and thereby reduces the pregnancy rate. You prepare and file a patent application that provides a fully enabling disclosure and includes four claims sets. Claims 1-5 are directed specifically to the non-hormonal substance (Antiagra), claims 6-9 are directed to a salt lick laced with a non-hormonal substance that, when ingested by a male deer, suppresses sexual function in the male deer, claims 9-14 are directed to the method of forming the salt lick, and claims 14-20 are directed to a method for controlling deer population by distributing salt licks that are treated with an effective amount of XYZ to reduce pregnancy rates. You also properly establish small entity status on behalf of Salt at the time the application is filed. Claim 6 of the application reads: "A composition for reducing the pregnancy rate among wild deer population, said composition comprising salt and a non-hormonal substance that, when ingested by a male deer, is operable to suppress sexual function in the male deer." Claim 7 reads: "The composition of claim 6, wherein said non-hormonal substance is XYZ." Claim 8 reads, "The composition of claim 6, wherein said composition is formed in a block and wherein said non-hormonal substance is interspersed substantially evenly throughout said block." Each of these claims is fully supported by the specification. An Office action is mailed March 15, 2002, rejecting Claim 6 under 35 U.S.C. 103 as being unpatentable over the Deere patent. Which of the following arguments, if presented in a timely reply to the March 15 Office action, is most likely to persuade the examiner to remove the 103 rejection without presenting unpersuasive arguments?* *A* "The invention of claim 6 provides an advantageous feature in that the substance that helps reduce the pregnancy rate is interspersed throughout the salt lick. Thus, the present invention is effective to reduce the pregnancy rate in deer so long as any portion of the salt lick is available to deer. In contrast, the Deere patent utilizes a substance that is sprayed on the outer surface of the salt lick and, therefore, is effective only so long as the outer portion of the salt lick is available." *B* "Applicant was aware of the Deere patent prior to filing of the present application, and the claims were carefully drafted to distinguish the present invention over the Deere patent. Accordingly, reconsideration and withdrawal of the § 103 rejection of claim 6 is respectfully requested." *C* "In contrast to the present invention, the Deere patent calls for the use of a hormonal substance that suppresses ovulation in female deer. Deere neither discloses nor suggests the use of a non-hormonal substance that, when ingested by a male deer, is operable to suppress sexual function in the male deer, as set forth in claim 6." *D* "The present invention relates to a technique for reducing deer overpopulation by causing male deer to ingest a novel substance (XYZ) that is operable to suppress sexual function in the male deer. The Deere patent neither discloses nor suggests such a technique and, therefore, claim 6 is neither anticipated nor rendered obvious by the Deere patent." *E* All of the above.

*E. Joan may obtain access to the entire Application A by submitting a written request, since, notwithstanding the fact that only a redacted copy of Application A has been published, a member of the public is entitled to see the entire application upon written request.* Explanation: Statement (E) is false, and is thus the most correct answer. Since a redacted copy of the application was used for publication purposes, 37 CFR § 1.14 (a)(1)(iii) provides that "(2) If a redacted copy of the application was used for the patent application publication, the copy of the specification, drawings, and papers may be limited to a redacted copy." For (A), see 37 CFR 1.14(a)(1)(v). Since it App B is a continuation of (i.e., claims benefit to) App A, which was been published, she can get the status of App B. Joan can access App D for a similar reason. It was used for priority in an issued patent. 37 CFR 1.14(a)(2) tells us that the application number is 8-digits, made up of a 2-digit series code + 6-digit serial number. So, the filing date and 6-digit number are enough. Thus, (B) is also true. (C) is actually similar to (B). Searching for "application-as-filed" gets you to 37 CFR 1.14(a)(1)(iv).As to (D), a co-inventor is entitled to access to the application independent of whether or not he or she signed the declaration. Note that as stated in 37 CFR § 1.41(a)(2), if a declaration or oath is not filed, the inventorship is that inventorship set forth in the application papers. *** This question referenced the MPEP, version E8R1 (from 2003). http://www.uspto.gov/web/offices/pac/mpep/old/E8R1_R.pdf. The application is referred to by its numerical identifier in a published patent document (e.g., a US patent, a US patent application publication, or an international application publication), or in a US application open to public inspection.

*Joan goes to a registered practitioner wanting to know the status of the applications of her competitor Pete. During Joan's previous relationship with Pete she believes she may have been a coinventor on one of the applications filed by Pete. Pete owns Applications A, B, C and D. Application B is a continuation of Application A and a redacted copy of Application A has been published under 35 USC 122(b). Joan is listed as a coinventor on Application C. Pete has an issued patent that claims priority to Application D. Assume only the last six digits of the numerical identifier are available for Application D and Application D is abandoned. Which of the following, in accordance with the USPTO rules and the procedures set forth in the MPEP, is not true?* *A* Joan may obtain status information for Application B that is a continuation of an Application A since Application A has been published under 35 USC 122(b). *B* Joan may be provided status information for Application D that includes the filing date if the eight-digit numerical identifier is not available and the last six digits of the numerical identifier are available. *C* Joan may obtain status information for Application D since a U.S. patent includes a specific reference under 35 USC 120 to Application D, an abandoned application. Joan may obtain a copy of that application-as-filed by submitting a written request including the fee set forth in 37 CFR 1.19(b)(1). *D* Joan may obtain status information as to Application C since a coinventor in a pending application may gain access to the application if his or her name appears as an inventor in the application, even if she did not sign the § 1.63 oath or declaration. *E* Joan may obtain access to the entire Application A by submitting a written request, since, notwithstanding the fact that only a redacted copy of Application A has been published, a member of the public is entitled to see the entire application upon written request.

*D. No, it invokes 112 ¶ 6 and upon further examination should be rejected for indefinitess 112 ¶ 2* Explanation: Analysis: The claim limitation invokes 112 ¶ 6, therefore the next step in the analysis is to determine if the specification discloses the corresponding structure, material, or acts in accordance with 112 ¶ 6. The issue is whether one of ordinary skill in the relevant art would understand the written description itself to disclose sufficient structure to support the processing means for conditionally coupling calls. The specification need only disclose sufficient structure to perform the function to one of ordinary skill in the relevant art and clearly link or associate structure to the claimed function. The specification of the patent discloses only a general purpose processor and not an algorithm that the processor would use to perform the recited function. Specifically, the 551 patent, does not disclose an algorithm that corresponds to the based on a condition coupling an incoming call to the operator terminal function. Computers can be programmed to conditionally couple calls in many ways. Without any disclosure as to the way the invention conditionally couples calls, the public is left to guess whether the claims cover only coupling based on particular system conditions, such as the availability of an operator, or are broad enough to cover any coupling in conjunction with an if-then statement in source code. Katz's claims therefore fail to fulfill the public notice function of 112 ¶ 2 of particularly pointing out and distinctly claiming the invention. By claiming a processor programmed to perform a specialized function without disclosing the internal structure of that processor in the form of an algorithm, the means-plus-function limitation of that claim constitutes pure functional claiming, which is contrary to the statute. Accordingly, the failure to disclose a structure corresponding to the processing means for coupling a call to the operator terminal based upon a condition renders the claim indefinite. Conclusion: (C) The claim is indefinite under 112 ¶ 2 because the disclosure only provides a statement that known techniques or methods can be used to program a general purpose computer to achieve the specific function and does not disclose corresponding structure, which in this case requires the disclosure of a special purpose computer, an algorithm, a specific software program, etc.

*Katz Interactive Call Processing Patent Litig. v. American Airlines, Inc., 97 U.S.P.Q.2D 1737 (Fed. Cir. 2011) regarded U.S. Patent No. 5,815,551 (the '551 patent). The claimed subject matter is drawn to a Telephonic-interface statistical analysis system. The relevant claim language of independent claim 21 is as follows: processing means . . . for receiving customer number data entered by a caller and for storing the customer number data . . . and based on a condition coupling an incoming call to the operator terminal, the processing means visually displaying the customer number data; The written description of the specification discloses the following in support of the noted means-plus function recitation of claim 21: The system of the present invention may qualify an entitled set of callers, then receive answer data in the course of the call and develop identification or designation data, sequence data and statistical data. The system may then provide data cells for storing individual data while assigning confirmable identifications to the entitled set. From the set, a subset is defined. That is, in accordance with various formats, acquired data is processed in statistical relationship, or in relation to applied external data to accomplish such functional operating formats as an auction sale, a contest, a lottery, a poll, a merchandising operation, a game, and so on. 551 patent, col. 2 ll. 11 " 21 The processing systems P1-Pn are similar, therefore, only the processing system P1 is shown in any detail. . . . The interface 20 provides the connection of the fifty lines to a switch 21 which is in turn coupled to fifty function units, or processors PR1-PRn. As indicated above, multiple function units, or processors, are described in the disclosed embodiment to facilitate the explanation. Of course, nonparallel techniques and multiplexed operations might well be employed as alternatives. For a similar reason, as disclosed herein, each of the processors PR1-PRn includes memory cells for each of the callers' individual data. Development and compilation of data in such cells according to various operating formats is described below. In the disclosed embodiment, the processors PR1-PRn are connected collectively to the command computer terminal CT (incorporating a CRT display), the interface terminal IT, and the printer PR. Note that the CRT display serves to visually display data regarding select subsets as explained in detail below. Exemplary detailed structures for the processors PR1-PRn are described below; however, in general, the units may comprise a microcomputer, for example, programmed as suggested above and as disclosed in detail below to accomplish specific operating formats. . . . On the qualification and designation of callers, the system enters a data accumulation phase during which digital data (formatted at one of the telephone terminals T1-Tn) is processed by one of the processors PR1-PRn. In general, the processing evolves a subset (at least one caller) the members of which may be verified and confirmed. 551 patent, col. 4 l. 35 " col. 5 l. 52 Does the disclosure of what only amounts to a general purpose computer satisfy the corresponding structure, material or acts requirement of 112 ¶ 6 to avoid an indefiniteness rejection?* *A* Yes, since the system employs a number of application-specific processors working in parallel in a large array there is sufficient specificity to allow this claim to be used in call record applications. *B* No, since the application on first exanimation invokes 112 ¶ 6 and on further examination is found to invoke 112 ¶ 6. *C* Yes, since the general purpose computer is patentable. *D* No, it invokes 112 ¶ 6 and upon further examination should be rejected for indefinitess 112 ¶ 2. *E* None of the above.

*D. A and C* Explanation: (D), because (A) and (C) are correct. (A) Since Japan is a WTO country and the conception was after January 1, 1996, a 37 CFR 1.131 affidavit can be used to antedate the reference back to the date of conception in Japan on August 11, 1997. That will put inventor B ahead of the December 5, 1997 application date of inventor Z. (B) This will not work because even if priority is perfected, the priority date will be April 3, 1998. This alone will not put inventor B ahead of inventor Z's December 5, 1997 filing date. Also, you need to look at the date you will be filing the correction to the priority. If should be within 4 months from the US filing or 16 month from the foreign filing. See 37 CFR 1.55 (C) Inventor B can also change his claims to claim around the prior art; however, he will likely be giving up claim scope in his patent.

*On January 19, 1999, inventor B filed a patent application in the PTO claiming invention X. Inventor B did not claim priority based on a foreign application filed by inventor B on April 3, 1998, in the Patent Office in Japan. In the foreign application, inventor B disclosed and claimed invention X, which inventor B had conceived on August 11, 1997, and reduced to practice on November 5, 1997, all in Japan. On December 21, 2000, the U.S. patent examiner issued an Office action where all the claims in the patent application were properly rejected under 35 USC 102(a) and (e) as being anticipated by a U.S. patent granted to inventor Z on September 1, 1998, on a patent application filed in the PTO on December 5, 1997. There is no common assignee between Z and B, and they are not obligated to assign their invention to a common assignee. Moreover, inventors Z and B, independently of each other, invented invention X, and did not derive anything from the other. The U.S. patent to Z discloses, but does not claim, invention X. Which of the following is/are appropriate reply (replies) which would overcome the rejections under 102(a) and (e)?* *A*File an antedating affidavit or declaration under 37 CFR 1.131 showing conception on August 11, 1997, and actual reduction to practice on November 5, 1997, all in Japan. *B*File a claim for the right and benefit of foreign priority wherein the Japanese application is correctly identified, file a certified copy of the original Japanese patent application, and argue that as a result of the benefit of foreign priority, the U.S patent is no longer available as a prior art reference against the claims. *C*Amend the claims to require particular limitations disclosed in inventor Bs application, but not disclosed or suggested in inventor Zs patent, and argue that the limitations patentably distinguish the claimed invention over the prior art. *D*A and C *E*B and C

*E. None of the above.* MPEP 2165. II. IMPACT OF FAILURE TO DISCLOSE THE BEST MODE PURSUANT TO THE AIA Section 15 of the Leahy-Smith America Invents Act (AIA), Pub. L. 112-29, 125 Stat. 284 (September 16, 2011), did not eliminate the requirement in pre-AIA 35 USC 112, first paragraph, for a disclosure of the best mode, (see 35 USC 112(a)) but effective September 16, 2011, it amended 35 USC 282 (the provision that sets forth defenses in a patent validity or infringement proceeding) to provide that the failure to disclose the best mode shall not be a basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable. As this change is applicable only in patent validity or infringement proceedings, it does not alter current patent examining practices as set forth above for evaluation of an application for compliance with the best mode requirement of 35 USC 112.

*Patent holder Bill sued alleged infringer Bob for infringement on September 19, 2011. After reviewing the patent in question, alleged infringer Bob determines that patent holder Bill failed to disclose the best mode in the patent. In accordance with the patent laws, rules and procedures as related in the MPEP, which of the following is correct?* *A* Alleged infringer Bob can assert that all the claims of the patent should be cancelled for failure to disclose the best mode. *B* Alleged infringer Bob can assert that some of the claims of the patent should be cancelled for failure to disclose the best mode. *C* Alleged infringer Bob can argue that all claims of the patent are invalid for failure to disclose the best mode. *D* Alleged infringer Bob can argue that some of the claims of the patent are invalid for failure to disclose the best mode. *E* None of the above.

D. Increasing the economic value of a patent by extending the effective term of the patent up to one year.

*Which of the following is not a policy underlying the public use bar of 35 USC 102(b)?* *A*.Discouraging the removal, from the public domain, of inventions that the public reasonably has come to believe are freely available. *B*.Favoring the prompt and widespread disclosure of inventions. *C*.Allowing the inventor(s) a reasonable amount of time following sales activity to determine the potential economic value of a patent. *D*.Increasing the economic value of a patent by extending the effective term of the patent up to one year. *E*.Prohibiting the inventor(s) from commercially exploiting the invention for a period greater than the statutorily prescribed time.

*E. (B) and (C)* Explanation: (E) is correct because (B) and (C) are correct. (A) does not overcome the prior art because the broad "comprising" language permits the laminate to include additional layers, such as an adhesive layer. MPEP 2111.03. (B) overcomes a 35 U.S.C. 102 rejection because the claim requires a light-sensitive layer to be in continuous and direct contact with the transparent protective layer, whereas the prior art interposes an adhesive layer between the light-sensitive layer and transparent protective layer. (C) also avoids the prior art by using a negative limitation to particularly point out and distinctly claim that Smith does not claim any laminate including an adhesive layer. MPEP 2173.05(i).

*Smith invented a laminate. In a patent application, Smith most broadly disclosed the laminate as comprising a transparent protective layer in continuous, direct contact with a light-sensitive layer without any intermediate layer between the transparent protective layer and the light-sensitive layer. The prior art published two years before the effective filing date of Smiths application included a laminate containing a transparent protective layer and a light-sensitive layer held together by an intermediate adhesive layer. Which of the following is a proper claim that would overcome a 35 U.S.C. 102 rejection based on the prior art?* *A*A laminate comprising a transparent protective layer and a light-sensitive layer. *B*A laminate comprising a transparent protective layer and a light-sensitive layer which is in continuous and direct contact with the transparent protective layer. *C*A laminate comprising a transparent protective layer and a light-sensitive layer, but not including an adhesive layer. *D*(A) and (B) *E*(B) and (C)

*E. To rely on equivalence as a rationale supporting an obviousness rejection under35 USC 103 an examiner may base the rejection on the mere fact that the components at issue are functional or mechanical equivalents.* Explanation: To rely on equivalence as a rationale supporting an obviousness rejection under 35 USC 103 an examiner may base the rejection on the mere fact that the components at issue are functional or mechanical equivalents. See MPEP 2144.06 (saying the opposite).(A): 2144(B): 2144(C): 2144.01(D): 2144.03

*The claims in an application are rejected under 35 USC 103 as obvious over prior art reference A in view of prior art reference B. All of the following statements are in accord with the patent laws, rules and procedures as related in the MPEP except:* *A* Where the combination of prior art references provides motivation to make the claimed invention to achieve the same advantage or result discovered by the applicant, the references do not have to expressly suggest the combination of references. *B* The rationale to modify or combine the prior art references may be reasoned from knowledge generally available to one of ordinary skill in the art, established scientific principles, or legal precedent established by prior case law. *C* In considering the disclosure of the prior art references, it is proper to take into account the specific teachings of the references, as well as the inferences that one skilled in the art could reasonably draw from the specific teachings. *D* An examiner may take official notice of facts outside the record that are capable of instant and unquestionable demonstration as being "well known" prior art or common knowledge in the art. *E* To rely on equivalence as a rationale supporting an obviousness rejection under35 USC 103 an examiner may base the rejection on the mere fact that the components at issue are functional or mechanical equivalents.

*E. The specification claims a mirror as being parallel in one place and claims a mirror being perpendicular in another place. The claim includes the mirror but PHOSITA would not know from the disclosure which orientation (i.e., parallel or perpendicular) of the mirror was claimed.* Explanation: (E) is correct because it is the only situation where the fact that a mirror is inherently reflective would not help adequately define the scope of the claim. In (E), PHOSITA would not know whether the parallel or perpendicular features is within the scope. MPEP 2163.07(a) - Inherent Function, Theory, or Advantage: "By disclosing in a patent application a device that inherently performs a function or has a property, operates according to a theory or has an advantage, a patent application necessarily discloses that function, theory or advantage, even though it says nothing explicit concerning it. The application may later be amended to recite the function, theory or advantage without introducing prohibited new matter. In reReynolds, 443 F.2d 384, 170 USPQ 94 (CCPA 1971); In reSmythe, 480 F. 2d 1376, 178 USPQ 279 (CCPA 1973). "To establish inherency, the extrinsic evidence 'must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill."

*The relevant invention relates to a new type of mirror. Unless mentioned, assume the specification make no mention of the reflective qualities of the mirror. Which of the following would fail for a lack of enablement under 35 USC 112.* *A* Replacing "mirror" with "reflective surface" when it is not defined in specification, but it would be known to PHOSITA. *B* Replacing "mirror" with its dictionary definition, no other definition for mirror is provided in the specification, and it would be obvious dictionary definition was meant to control. *C* Replacing "mirror" with "light reflecting surface," and the examiner properly takes notice of this definition as a well known fact. *D* ""Mirror" is replaced in the claim with "reflective surface" when a mirror is defined as a reflective surface in the specification. " *E* The specification claims a mirror as being parallel in one place and claims a mirror being perpendicular in another place. The claim includes the mirror but PHOSITA would not know from the disclosure which orientation (i.e., parallel or perpendicular) of the mirror was claimed.

*C. must be known or used in this country.* Explanation: (C) is the most correct answer. 35 U.S.C. 102(a); MPEP 2132. As set forth in MPEP 2132, under the heading "II. ˜In This Country," subheading "Only Knowledge or Use In The U.S. Can Be Used in a 35 U.S.C. 102(a) Rejection," states "[t]he knowledge or use relied on in a 35 U.S.C. 102(a) rejection must be knowledge or use ˜in this country. Prior knowledge or use which is not present in the United States, even if widespread in a foreign country, cannot be the basis of a rejection under 35 U.S.C. 102(a). In re Ekenstam, 256 F.2d321, 118 USPQ 349 (CCPA 1958). Note that the changes made to 35 U.S.C.104 by NAFTA (Public Law 103-182) and Uruguay Round Agreements Act (Public Law 103-465) do not modify the meaning of ˜in this country as used in 35 U.S.C. 102(a) and thus ˜in this country" still means in the United States for purposes of 35 U.S.C. 102(a) rejections." See also MPEP 706.02(c), "[t]he language ˜in this country means in the United States only and does not include other WTO or NAFTA member countries." Since "in this country" means in the United States for purposes of 35 U.S.C. 102(a) rejections, (A), (B), (D) and (E) are incorrect.

*To rely in a rejection in 2012 under 35 USC 102(a) on an invention that is known or publicly used in accordance with patent laws, rules and procedures as related in the MPEP, the invention:* *A* must be known or used in NAFTA or WTO member countries. *B* must be known or used in a NAFTA member country, but only if the filing date of the application is after the effective date of the North American Free Trade Agreement Implementation Act. *C* must be known or used in this country. *D* can be known or used in any country. *E* must be known or used in a WTO member country, but only if the filing date of the application is after the effective date of the implementation of the Uruguay Round (WTO) Agreements Act.

*E. None of the above* Explanation: (E) is the correct answer. First, you should notice the question does not have a date, so how do you know if you fall under pre or post-AIA laws? The question mentions statutory bars under 102(b). Only pre-AIA 102(b) has these (post-AIA 102(b) sets forth the exceptions to the bars to patentability in 102(a)), so this must be a pre-AIA question.(A) is incorrect because it is permitted experimental testing. MPEP 2133.03(e)(3) and (6). (B) and (D) are each incorrect because the sales occurred outside of the United States. 35 U.S.C. 102(b); MPEP 706.02(c) and 2133.03(d). (C) is incorrect as it provides the basis for a rejection under 35 U.S.C. 103, but not a statutory bar under 35 U.S.C. 102(b).

*Which of the following establishes a statutory bar under 35 USC 102(b) to patentability of Applicants claimed invention?* *A* To further develop the invention, Applicants invention was tested and experimented in the United States beginning more than one year prior to applicants effective U.S. filing date, but the invention at the time was not fit for its intended use. *B* Applicants invention was sold in a WTO member country outside the United States more than one year prior to applicants effective U.S. filing date, and the sale was merely market testing of the invention to determine product acceptance. *C* Applicants invention is rendered obvious by the combination of two U.S. patents, both of which were patented more than one year prior to applicants effective filing date. *D* Applicants invention was sold outside the United States in a non-WTO member country, more than one year prior to applicants effective U.S. filing date, but the sale was merely an attempt at market penetration. *E* None of the above.

*B. Disclosure of the best mode is required under the first paragraph of 35 U.S.C. 112.* Explanation: See MPEP 2165, which states in part: Section 15 of the Leahy-Smith America Invents Act (AIA), Public Law 112-29, 125 Stat. 284 (Sept. 16, 2011), did not eliminate the requirement in 35 U.S.C. 112 , first paragraph, for a disclosure of the best mode, but effective September 16, 2011, it amended 35 U.S.C. 282(the provision that sets forth defenses in a patent validity or infringement proceeding) to provide that the failure to disclose the best mode shall not be a basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable. As this change is applicable only in patent validity or infringement proceedings, it does not alter current patent examining practices as set forth above for evaluation of an application for compliance with the best mode requirement of 35 U.S.C. 112.

*Which of the following is in accordance with the patent laws, rules and procedures as related in theMPEP?* *A* Disclosure of the best mode is no longer required under the first paragraph of 35 U.S.C. 112. *B* Disclosure of the best mode is required under the first paragraph of 35 U.S.C. 112. *C* A specific example is required to meet the statutory requirements for best mode. *D* The best mode must be designated as such within the specification. *E* If the best mode contemplated by the inventor at the time of filing the application is not disclosed, such a defect can be cured by submitting an amendment.

A. Interlineation, erasure, cancellation, or other alteration of the application papers may be made before or after the signing of the inventor's oath or declaration referring to those application papers, provided that the statements in the inventor's oath or declaration pursuant to § 1.63 remain applicable to those application papers.

*Which of the following is in accordance with the practice and procedures of Chapter 600 of the MPEP and/or 37 CFR 1.52(c)?* *A*.Interlineation, erasure, cancellation, or other alteration of the application papers may be made before or after the signing of the inventor's oath or declaration referring to those application papers, provided that the statements in the inventor's oath or declaration pursuant to § 1.63 remain applicable to those application papers. *B*.Interlineation, erasure, cancellation, or other alteration of the application papers may only be made before the signing of the inventor's oath or declaration referring to those application papers, provided that the statements in the inventor's oath or declaration pursuant to § 1.63 remain applicable to those application papers. *C*.Interlineation, erasure, cancellation, or other alteration of the application papers may be made only after the signing of the inventor's oath or declaration referring to those application papers, provided that the statements in the inventor's oath or declaration pursuant to § 1.63 remain applicable to those application papers. *D*.Non-initialed or non-dated handwritten alterations to the claims on an application filed in the USPTO are considered to be a minor informality. Thus, the Office personnel should not object to the same. *E*.It is proper for an applicant to sign an oath or declaration even when the oath or declaration (i) does not identify a patent application or (ii) is not attached to or physically located together with the patent application.

*C. Evidence demonstrating the level of ordinary skill in the art.* Explanation: The most correct answer is (C). The level of ordinary skill in the art is one of the factors that must be considered in any obviousness determination. Graham v. John Deere, 383 U.S. 1, 148 USPQ 459 (1966). (A) is not the best answer because 35 U.S.C. 103 specifically states that patentability shall not be negated by the manner in which the invention was made. (B) is not the best answer because economic unfeasibility is not a basis for a determination of nonobviousness. See MPEP 2145 VII. (D) is directed to the issue of enablement, not obviousness. (E) is wrong because the commercial success of the prior art is not relevant (although commercial success of the claimed invention would be relevant).

*Which of the following is most likely to be considered in a proper obviousness determination?* *A* Evidence demonstrating the manner in which the invention was made. *B* Evidence that a combination of prior art teachings, although technically compatible, would not be made for economic reasons. *C* Evidence demonstrating the level of ordinary skill in the art. *D* Evidence that one of ordinary skill in the art, after reading the patent application, would readily be able to make and use the invention without undue experimentation. *E* Evidence that the prior art, as described in a magazine, has enjoyed great commercial success.

*D. Increasing the economic value of a patent by extending the effective term of the patent up to one year.* Explanation: (D) is the most correct answer. Extending patent term is not a policy underlying any section of 35 U.S.C. 102. In fact, it is the opposite of the policy objectives of the law. Answers (A), (B), (C) and (E) do state policies underlying the public use bar. See Lough v. Brunswick Corp., 86 F.3d 1113, 39 USPQ2d 1100 (Fed. Cir. 1996); see also MPEP 2133.03.

*Which of the following is not a policy underlying the public use bar of 35 USC 102(b)?* *A* Discouraging the removal, from the public domain, of inventions that the public reasonably has come to believe are freely available. *B* Favoring the prompt and widespread disclosure of inventions. *C* Allowing the inventor(s) a reasonable amount of time following sales activity to determine the potential economic value of a patent. *D* Increasing the economic value of a patent by extending the effective term of the patent up to one year. *E* None of the above.

*C. A claim to a method of controlling a mechanical robot which relies upon storing data in a computer that represents various types of mechanical movements of the robot.* Explanation: (C) is the most correct answer. MPEP (8th ed.) 2106(IV)(B)(2)(b)(i), under the heading "Safe Harbors," subheading "Independent Physical Acts (Post-Computer Process Activity)," states that "[e]xamples of this type of statutory process include ¦[a] method of controlling a mechanical robot which relies upon storing data in a computer that represents various types of mechanical movements of the robot, using a computer processor to calculate positioning of the robot in relation to given tasks to be performed by the robot, and controlling the robot s movement and position based on the calculated position." (A) is an incorrect answer. As set forth in MPEP 2105 a " new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter." (B) is an incorrect answer. As set forth in MPEP (8th ed.) 2106(IV)(B)(2)(b)(i), under the heading "Safe Harbors," subheading "Manipulation of Data Representing Physical Objects or Activities (Pre-Computer Process Activity)," states that "[e]xamples of claimed processes that do not limit the claimed invention to pre-computing safe harbor include: . . . - selecting a set of arbitrary measurement point values ([In re] Sarkar, 588 F.2d [1330] at 1331, 200 USPQ [132] at 135)." (D) is an incorrect answer. MPEP (8th ed.) 2106(IV)(B)(2)(b)(i) under the heading "Safe Harbors," subheading "Independent Physical Acts (Post-Computer Process Activity)," states that "[e]xamples of claimed process that do not achieve a practical application include:-step of ˜updating alarm limits found to constitute changing the number value of a variable to represent the result of the calculation (Parker v. Flook, 437 U.S.584, 585, 198 USPQ 193, 195 (1978)." (E) is a true statement, and therefore is an incorrect answer. MPEP (8th ed.) 2106(IV)(B)(1), under the heading "Nonstatutory Subject Matter" states "[In re]Warmerdam, 33 F.3d [1354,] at 1361, 31 USPQ2d [1754,] at 1760 (claim to a data structure per se held nonstatutory)."

*Which of the following is patentable subject matter under 35 USC 101 in accordance with the patent laws, rules, and procedures as set forth in the MPEP?* *A*A claim to a new mineral discovered in the earth or a new plant found in the wild. *B*A claim to a method of using a computer to select a set of arbitrary measurement point values. (The selected values are not to be transformed outside of the computer into computer data). *C*A claim to a method of controlling a mechanical robot which relies upon storing data in a computer that represents various types of mechanical movements of the robot. *D*A claim to a method of updating alarm limits by changing the number value of a variable to represent the result of the calculation. *E*A claim to a data structure per se. (The claim does not specify any location where the data structure is stored).

*C. Claiming priority under 35 U.S.C. 119(e) or 120 by amending the specification of the application to contain a specific reference to a prior application having a filing date prior to the reference.* Explanation: (A), (B), and (D) are all acceptable ways to overcome pre-AIA 102(e) according to MPEP 706.02(b)(2). Answer choice (C) would also be an acceptable response for applications filed prior to September 16, 2012.

*Which of the following practices or procedures may not currently be employed to overcome a rejection properly based on pre-AIA 35 U.S.C. § 102(e)?* *A* Claiming priority under 35 U.S.C. 119(a)-(d) based on a foreign application having a foreign priority filing date that antedates the reference by filing a corrected application data sheet under 37 CFR 1.76 which identifies a prior foreign application in accordance with 37 CFR 1.55. *B* Claiming priority under 35 U.S.C. 119(e) or 120 by filing an application data sheet under 37 CFR 1.76 that contains a specific reference to the prior application in accordance with 37 CFR 1.78(a), where the prior application has a filing date prior to the reference. *C* Claiming priority under 35 U.S.C. 119(e) or 120 by amending the specification of the application to contain a specific reference to a prior application having a filing date prior to the reference. *D* Amending the claims to patentably distinguish over the prior art. *E* All of the above.

*A. I* Explanation: (A) I. is the most correct answer. MPEP 2144.03. I. is correct because an applicant must seasonably traverse the statement or else the object of the statement is taken to be admitted prior art.Therefore, (B), (C), and (E) are incorrect. II. Is incorrect because it must be rebutted/traversed in the next reply.Therefore, (D) is also incorrect, leaving only (A).III. is incorrect because the action can potentially be made final. See MPEP 2144.03.

*Which of the following statements concerning reliance by an examiner on common knowledge in the art in a rejection under 35 USC 103 is correct? I. An examiners statement of common knowledge in the art is taken as admitted prior art if applicant does not adequately traverse the statement during examination. II. Applicant can traverse an examiners statement of common knowledge in the art at any time during the prosecution of an application to properly rebut the statement. III. If applicant rebuts an examiners statement of common knowledge in the art in the next reply after the Office action in which the statement was made, the examiner cannot provide a reference to support the statement of common knowledge in the next Office action and make the next Office action final.* *A* I *B* II *C* III *D* I and II *E* None of the above.

*C. Statement 3* Explanation: (C) is the most correct answer. The principle in Statement 3, that consideration of inherent properties is part of proper consideration of the invention as a whole, is recited in MPEP 2141.02, under the heading "Disclosed Inherent Properties Are Part Of ˜As A Whole Inquiry," and in In re Antonie, 559 F.2d 618, 620, 195 USPQ 6, 8 (CCPA 1977). (A) is incorrect, because the proper question is whether the invention as a whole, not just the differences, would have been obvious. See MPEP 2141.02, under the heading "The Claimed Invention As A Whole Must Be Considered," (citing Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d1530, 218 USPQ 871 (Fed. Cir. 1983). (B) is incorrect because an examiner should consider such assertions by an inventor as part of the "subject matter as a whole." See MPEP 2141.02 (citing In re Sponnoble, 405 F.2d 578, 585, 160 USPQ 237, 243 (CCPA 1969)). (D) and (E) are incorrect because they include incorrect Statements 1 and/or 2.

*Which of the following statements is or are in accord with the patent laws, rules and procedures as related in the MPEP? (1) In a 35 USC 103 obviousness analysis, the proper question is whether the differences between the prior art and the claims would have been obvious to one of ordinary skill in the art. (2) In a 35 USC 103 obviousness analysis, an inventors assertion the he has discovered the source or cause of an identified problem should never be considered. (3) A 35 USC 103 obviousness analysis requires consideration not just of what is literally recited in the claims, but also of any properties inherent in the claimed subject matter that are disclosed in the specification.* *A* Statement 1 *B* Statement 2 *C* Statement 3 *D* Statements 1 & 2 *E* Statements 1 & 3

*E. (B) and (C)* Explanation: See 35 USC 112; MPEP 2165

*Which of the following, if any, is true?* *A* An inventor can keep the best mode secret to exploit it later for financial gain. *B* At the time of filing, an inventor must disclose the best mode they know of even if discovered by another person. *C* An inventor may disclose several embodiments, one of which is his best mode, but not point out in the specification which one is his best mode. *D* Failure to provide the best mode known by the inventor at time of filing can be corrected after issue of the patent by amending the specification. *E* (B) and (C)

*B. Statement (2) only* Explanation: (B) is the most correct, as only statement (2) is true. The examiner has the initial burden to establish a reasonable basis to question the enablement provided. MPEP 2164.04 states "[i]n order to make a rejection, the examiner has the initial burden to establish a reasonable basis to question the enablement provided for the claimed invention. In re Wright,999 F.2d 1557, 1562, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993) (examiner must provide a reasonable explanation as to why the scope of protection provided by a claim is not adequately enabled by the disclosure)." Answer (A) is incorrect, because statement (1) is not true. The examiner may not analyze enablement before construing the claims. MPEP 2164.04. Answer (C) is incorrect, because statement (3) is not true. The examiner must give reasons for the uncertainty of the enablement, even when there is no evidence of operability without undue experimentation other than the disclosed embodiments. In re Brana, 51 F.3d 1560, 1566, 34USPQ2d 1436, 1441 (Fed. Cir. 1995). MPEP 2164.04 states "[a]ccording to In re Bowen, 492F.2d 859, 862-63, 181 USPQ 48, 51 (CCPA 1974), the minimal requirement is for the examiner to give reasons for the uncertainty of the enablement." Answer (D) is incorrect because it includes false statement (1). Answer (E) is incorrect because it includes false statements (1) and (3).

*With respect to the examiners burden in making an enablement rejection under 35USC 112, first paragraph, which of the following statements is or are in accordance with the patent laws, rules and procedures as related in the MPEP? (1) The examiner may properly make an enablement rejection before construing the claims. (2) The examiner has the initial burden to establish a reasonable basis to question the enablement provided for the claimed invention. (3) The examiner need not give reasons for the uncertainty of the enablement when there is no evidence of operability beyond the disclosed embodiments.* *A* Statement (1) only *B* Statement (2) only *C* Statement (3) only *D* Statements (1) and (2) *E* Statements (1) and (3)