Test takers report a question involving whether the reflective qualities of a mirror should be included in the specification. You were to choose from a list of choices that comported with USPTO practice and procedure. Among the answers (from memory):
(A) Because the definition of mirror automatically includes its reflective qualities, there is no need to amend the specification to include the reflective qualities
(E) The mirror in one part of the specification is “parallel,” and the mirror in another part is “perpendicular.” The specification is conflicting and one who has knowledge in the art would not be able to tell the difference, so amend the specification.
The answer is (A) based on 2163.07(a) Inherent Function, Theory, or Advantage. Reflection is an inherent function of a mirror, so there is no need to mention it in the description. Whether it is positioned parallel or perpendicular has nothing to do with its reflective qualities, and would likely be obvious. “Special” reflective qualities known to one skilled in the art (if included – this is hypothetical) would be different and should be included for enablement purposes.
{ 22 comments… read them below or add one }
A test taker noted: I picked (E) which talked about perpendicular and parallel mirrors and 112 indefinite, as opposed to (A) and (B) which talked about inherent qualities and the definition of “mirror”.
The folks over at patentbarquestions.com state “However, based on review of March, 2008 exam at PTO, this question deals with the enablement requirement and the correct answer is E (from the recollection of the above choices) because the specification is conflicting and PHOSITA would be unable to determine which description is correct.”
From the forum: “I also got the mirror question(The answer is reject b/c “parallel” wording”
There are evidently 2 variants of the “Mirror” question. I got the “parallel/perpendicular/enablement” wording variant on 1/27/08. It is of the “which is not correct” type – just pick the answer that involves the mirror and no enablement. The other answers have nothing to do with a mirror.
So, there are two versions (both of which contain “parallel” and “perpendicular” mirrors). One in which enablement is lacking and one that deals with inherent properties of a mirror (ie reflection), and how this should not be placed in the specification.
I guess I’m wondering what differentiates the two variants. What is the red herring that identifies it as the enablement question? Is it the “special reflective properties” issue? Thanks very much.
I picked wrong answer (e) too. It was on March 20, 2009 exam.
why me
How do you know you missed it? Did it ask you about inherency or about enablement? It seems like the answer hinges on the call of the question.
I got a version of this question yesterday on my exam. The fact pattern asked, “in reply to which one of the actions by the applicant, the examiner can issue a rejection by 112 first paragraph”
Both selections A and E where there but they where clearly not the right choice for my version since the fact pattern asks a rejection, the selection must talk about claims. Both A and E above talk about amending spec. and no talk on claims. So the answer I choice had to to something with the claims and I guess it was listed as B, I think it was mentioning about a claim including “mirror” as a word replace the mirror with “light reflecting material” in an amendment.
The reasoning above may not be sound in all circumstances – consider the following from the MPEP:
2163.06 I. Treatment of New Matter
… “In an instance where the claims have not been amended, per se, but the *specification has been amended* to add new matter, a *rejection* of the claims under 112(1) should be made whenever any of the claim limitations are affected by the added material.” …
actually editing my message above, the fact patter was more specific. it asked about rejection by 112 first paragraph written spec./disclosure.
matt30
just my 2 cents:
112 first paragraph is about specification and the written description that must be concise… I would say that E above will give enough reason to an examiner to reject it under 112 1st…
thx…
PS I am taking the test in 8 days…
thnx Dan. Good luck
If the question asks about 112 rejection, are we sure that it is referring to the first paragraph and not the others? In other words, is this an enablement issue or an indefiniteness of claims issue? In an earlier post, somebody indicated that one of the answer choices was “replacing ‘mirror’ by the dictionary definition”. This could render the claim indefinite under the second paragraph of 112 (MPEP 706.03 (d)) if the disclosure in the spec doesn’t agree with the claims.
In regards to answer E above, I would think that it really depends on what the claims say. A specification can disclose multiple configurations (just as it can disclose multiple “effective amounts of…”), as long as the claims are supported by the specification and don’t conflict with it. However, I suppose that a spec with conflicting information does not properly enable….so I might be wrong.
I had a mirror question on 8/11/09. I think it was probably the same question confronted by Scruff. My recollection is that the term mirror in the original disclosure was replaced by reflective surface, and that the distinction between diffuse and nondiffuse reflection was made explicitly in the fact pattern. So, I interpreted the replacement as new matter, as nondiffuse reflectors (like mirrors) are a subset of reflectors (that include snow and stainless steel). One of the answers offered seemed to me to be consistent with this interpretation, but I do not know if the PTO regards that choice as correct.
Art Williams
I had the mirror question on my test of 9/8/09, and the question call asked about a rejection under 112 but I don’t recall if it mentioned the paragraph. The first four answers dealt with swapping definitions around, but all had some variant of “a PHOSITA would readily understand the definition” or “fully supported in the disclosure”. The last answer had the parallel vs. perpendicular issue, and furthermore said a PHOSITA would *NOT* understand which one was intended from the disclosure. To me that was a dead giveaway that the last answer would lead to a rejection. So make sure you read the fairly lengthy answers carefully to look for clues on this one.
Got this question Yesterday, and the answer is fairly obvious so don’t sweat it. It asks which situatuion would a USC 112 rejection be made. I chose the answer which didnt enable POSITA
This question was on my exam yesterday. The question asked in which answer would there be a 112, first paragraph rejection.
The answers were similar to those listed by others (a) the reflective qualities of a mirror are inherent; (b) amend the spec to include a dictionary def of a mirror; (c) and (d) can’t remember; (e) parallel/perpendicular.
However, the answers all noted ways to amend the claim and/or spec to overcome the rejection. For (e) it specifically noted to amend the spec for the perpendicular language to read parallel and state that this was an oversight and the spec is now correct.
I continue to suspect that the restriction of the question to the first paragraph of 112 implies that the question is probing the distinction between the description (1st paragraph) and enablement (2nd paragaph) requirements. Consider the following portion of 2161.01.
(While acknowledging that some of its cases concerning the written description requirement and the enablement requirement are confusing, the Federal Circuit reaffirmed that under 35 U.S.C. 112, first paragraph, the written description requirement is separate and distinct from the enablement requirement and gave an example thereof.). An invention may be described without the disclosure being enabling (e.g., a chemical compound for which there is no disclosed or apparent method of making), and 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 would be enabling for formulations falling within the description but would not describe any specific formulation).
There is no mention of PHOSITA is the MPEP discussion of the description requirement.
At least in the MPEP, inherency is discussed elsewhere (2112).
In the version of this question that I encountered, I thought the distinction in scope between mirror and reflecting surface was the target of the question.
Art Williams
Both written description and enablement are 112 1st paragraph requirements.
To anyone who has taken the test and had this one:
Did the call of the question have a blurb about the specs, including this discrepency about the mirror being perp/par and THEN have a set of claims that were indefinite as to the mirror in light of the poorly-written specs? Everyone seems to be saying the question asks whether a rejection would be improper, so I’m wondering a rejection of what? Seems like you’d have to have a claim there to know if a rejection is appropriate (e.g., April 02 pm #44 “effective amount” used in claims where specs had two different explanations of what’s an “effective amount”)
If, on the other hand, the question just says “this is what the specs say – do they need to be fixed?” and it doesn’t involve claims, then maybe that’s the variant in which (a) is right b/c then you’re just being asked if a “mirror” inherently has reflective properties, in the same way, e.g., a “screw” has threads
Got this today, and picked E as the only one that wasn’t enabling.
Had this on 6/7. The answer was pretty obvious. The facts set out how one part of the spec talks about the mirror being parallel, another talking about the mirror being perpendicular. The correct answer said that the claim wasn’t enabling since it didn’t mention which configuration it was referring to or something like that.