What rejections should be considered for unsupported means-plus-function limitations?
When a means- (or step-) plus-function limitation in a claim is not supported by corresponding structure, material, or acts in the specification, the examiner should consider the following rejections under 35 U.S.C. 112: Enablement (35 U.S.C. 112(a)): If the skilled artisan would not know how to make and use the invention without a description of…
Read MoreWhat are the main requirements under 35 U.S.C. 112(a)?
The main requirements under 35 U.S.C. 112(a) are: Written Description: The specification must contain a written description of the invention. Enablement: The specification must enable any person skilled in the art to make and use the invention. Best Mode: The specification must set forth the best mode contemplated by the inventor for carrying out the…
Read MoreWhat is the legal basis for the written description requirement?
The written description requirement is grounded in U.S. patent law, specifically in 35 U.S.C. 112(a). The MPEP 2163.01 references this legal basis: “If the examiner concludes that the claimed subject matter is not supported [described] in an application as filed, this would result in a rejection of the claim on the ground of a lack…
Read MoreWhat is the legal basis for rejecting single means claims?
The legal basis for rejecting single means claims stems from the Manual of Patent Examining Procedure (MPEP) 2164.08(a), which cites 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. The MPEP states: “A single means claim, i.e., where a means recitation does not appear in combination with another recited element of means, is subject…
Read MoreWhat is the legal basis for the best mode requirement in patent law?
The best mode requirement in patent law is derived from 35 U.S.C. 112(a), which states: “The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which…
Read MoreWhat is the relationship between inherency and the enablement requirement?
What is the relationship between inherency and the enablement requirement? While MPEP 2163.07(a) primarily discusses inherency in relation to the written description requirement, it’s important to understand its relationship with the enablement requirement under 35 U.S.C. 112(a): Inherency can support both written description and enablement requirements. If a property is inherent to the disclosed invention,…
Read MoreWhat is the significance of In re Rasmussen in relation to new matter?
The case of In re Rasmussen is significant in the context of new matter in patent applications. As mentioned in MPEP 2163.06: “In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981)” This case established an important principle: When new matter is added to the claims, the appropriate action is to reject the claims…
Read MoreIs the “how to use” requirement necessary for a prior art document to qualify as anticipatory under AIA 35 U.S.C. 102?
No, the “how to use” requirement is not necessary for a prior art document to qualify as anticipatory under AIA 35 U.S.C. 102. The MPEP explicitly states: “There is, however, no requirement that a prior art document meet the ‘how to use’ requirement of 35 U.S.C. 112(a) in order to qualify as prior art.” This…
Read MoreWhat is Form Paragraph 7.05.018 used for in patent examination?
Form Paragraph 7.05.018 is used in patent examination to address computer-implemented functional claim limitations in the context of subject matter eligibility rejections under 35 U.S.C. 101. According to MPEP 2106.07(a)(1), this form paragraph is used: “For computer-implemented functional claim limitations, to explain that the computer and algorithm are not sufficiently described.” Specifically, Form Paragraph 7.05.018…
Read MoreCan a patent specification be enabling without describing the invention?
Yes, it is possible for a patent specification to be enabling without fully describing the invention. The MPEP 2161 provides an example of this situation: “A disclosure could be enabling without describing the invention (e.g., a specification describing a method of making and using a paint composition made of functionally defined ingredients within broad ranges…
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