Comments on: Q) Mirror (MPEP 2100, Inherent Function) http://mypatentbar.com/2007/05/03/q3-mirror/ Patent Bar Review and Study Guide Sat, 19 May 2012 21:33:10 +0000 http://wordpress.org/?v=2.9.2 hourly 1 By: Miranda http://mypatentbar.com/2007/05/03/q3-mirror/#comment-37648 Miranda Fri, 06 Apr 2012 21:18:56 +0000 http://patentbar.wordpress.com/2007/05/03/q3-mirror/#comment-37648 I agree with the answer, but just out of curiosity does anyone know where the parallel/perp example is in the MPEP? I agree with the answer, but just out of curiosity does anyone know where the parallel/perp example is in the MPEP?

]]> By: Sol http://mypatentbar.com/2007/05/03/q3-mirror/#comment-37500 Sol Thu, 05 Apr 2012 17:57:58 +0000 http://patentbar.wordpress.com/2007/05/03/q3-mirror/#comment-37500 If appl amends pendicular to parralle, this is is new matter and the new matter will indirectly affect claims so the claims need to be rejected on written description basis, a 112 1st rejection or the applicant argues that it is merely correct an error. OK, should it be an error, is a skilled artisan able to recognize the error and solution? It seems at least a skilled artisan would not know the solution even if he recognizes the error. so the error cannot be corrected and it is new matter, and this new matter affects claims so claims are rejected. If appl amends pendicular to parralle, this is is new matter
and the new matter will indirectly affect claims
so the claims need to be rejected on written description basis, a 112 1st rejection

or the applicant argues that it is merely correct an error. OK, should it be an error, is a skilled artisan able to recognize the error and solution? It seems at least a skilled artisan would not know the solution even if he recognizes the error. so the error cannot be corrected and it is new matter, and this new matter affects claims so claims are rejected.

]]> By: Tonya Saheli http://mypatentbar.com/2007/05/03/q3-mirror/#comment-22917 Tonya Saheli Tue, 22 Nov 2011 03:51:23 +0000 http://patentbar.wordpress.com/2007/05/03/q3-mirror/#comment-22917 Has anyone taken the patent bar exam in the past month? Has anyone taken the patent bar exam in the past month?

]]> By: Tonya Saheli http://mypatentbar.com/2007/05/03/q3-mirror/#comment-22916 Tonya Saheli Tue, 22 Nov 2011 03:50:50 +0000 http://patentbar.wordpress.com/2007/05/03/q3-mirror/#comment-22916 Ha anyone taken the patent bar in the past month? Ha anyone taken the patent bar in the past month?

]]> By: maggie http://mypatentbar.com/2007/05/03/q3-mirror/#comment-15755 maggie Wed, 14 Sep 2011 05:39:10 +0000 http://patentbar.wordpress.com/2007/05/03/q3-mirror/#comment-15755 Deduced from previous postings could be incorrect. Deduced from previous postings could be incorrect.

]]> By: maggie http://mypatentbar.com/2007/05/03/q3-mirror/#comment-15754 maggie Wed, 14 Sep 2011 05:37:23 +0000 http://patentbar.wordpress.com/2007/05/03/q3-mirror/#comment-15754 Q3) Mirror (“parallel/perpendicular/enablement lacking variant) The mirror element was described in the specification as a component of a larger invention. In one place of the specification the mirror is described as parallel in relation to other components, whereas later in the specification the mirror is described as being perpendicular to the other component. Q After amendment, which would Examiner be able to properly make a 35 USC 112 rejection? (a) replacing “mirror” with “reflective surface” when it is not defined in spec., but would be known to PHOSITA. (b) replacing “mirror” with dictionary definition “…” and no other definition was given in spec for mirror and it was obvious dictionary definition was meant. (c) replacing “mirror” with light reflecting surface and the examiner properly takes notice of this well known fact (d) “mirror” is replaced in the claim with “reflective surface” when a mirror is defined as a reflective surface in the spec. Answer (e) amending “perpendicular” to “parallel”, which admits that PHOSITA is confused (the spec claims a mirror as being parallel in one place and claims a mirror being perpendicular in another place) and the claim describes mirror PHOSITA would not know from the disclosure which property of the mirror was claimed. Agreed Answer (e) Q3) Mirror (“parallel/perpendicular/enablement lacking variant)
The mirror element was described in the specification as a component of a larger invention. In one place of the specification the mirror is described as parallel in relation to other components, whereas later in the specification the mirror is described as being perpendicular to the other component.
Q After amendment, which would Examiner be able to properly make a 35 USC 112 rejection?
(a) replacing “mirror” with “reflective surface” when it is not defined in spec., but would be known to PHOSITA.
(b) replacing “mirror” with dictionary definition “…” and no other definition was given in spec for mirror and it was obvious dictionary definition was meant.
(c) replacing “mirror” with light reflecting surface and the examiner properly takes notice of this well known fact
(d) “mirror” is replaced in the claim with “reflective surface” when a mirror is defined as a reflective surface in the spec.
Answer (e) amending “perpendicular” to “parallel”, which admits that PHOSITA is confused (the spec claims a mirror as being parallel in one place and claims a mirror being perpendicular in another place) and the claim describes mirror PHOSITA would not know from the disclosure which property of the mirror was claimed.

Agreed Answer (e)

]]> By: Daniel http://mypatentbar.com/2007/05/03/q3-mirror/#comment-13976 Daniel Wed, 03 Aug 2011 14:52:47 +0000 http://patentbar.wordpress.com/2007/05/03/q3-mirror/#comment-13976 Got this one 7/29/11 with the answers slightly different but the correct answer essentially the same. Got this one 7/29/11 with the answers slightly different but the correct answer essentially the same.

]]> By: BigBadVoodoDaddy http://mypatentbar.com/2007/05/03/q3-mirror/#comment-13122 BigBadVoodoDaddy Wed, 06 Jul 2011 23:03:58 +0000 http://patentbar.wordpress.com/2007/05/03/q3-mirror/#comment-13122 The answer seems to be e. But my two cents on the other choices are that if one were to replace the word mirror (which has glass, a reflective surface and a backing surface) with a light reflecting surface, which could be a highly polished piece of metal, a coating etc - that would infact be mirror like - hence new material in the description or indefinite too if used in the claim. The answer seems to be e.
But my two cents on the other choices are that if one were to replace the word mirror (which has glass, a reflective surface and a backing surface) with a light reflecting surface, which could be a highly polished piece of metal, a coating etc – that would infact be mirror like – hence new material in the description or indefinite too if used in the claim.

]]> By: Freds http://mypatentbar.com/2007/05/03/q3-mirror/#comment-11696 Freds Mon, 30 May 2011 07:32:45 +0000 http://patentbar.wordpress.com/2007/05/03/q3-mirror/#comment-11696 112 P2 covers indefitness and the standard there is insolubly indefinite. I am not sure E provides such basis for rejection. 112 P2 covers indefitness and the standard there is insolubly indefinite. I am not sure E provides such basis for rejection.

]]> By: Freds http://mypatentbar.com/2007/05/03/q3-mirror/#comment-11695 Freds Mon, 30 May 2011 07:28:45 +0000 http://patentbar.wordpress.com/2007/05/03/q3-mirror/#comment-11695 112 P1 covers enablement, written description and best mode. I am not sure how E is tied with enablement based on you guys' description of the fact pattern. Your reasonings more or less tie with the cannons of claim construction, which is not in the purview of 112.. . 112 P1 covers enablement, written description and best mode. I am not sure how E is tied with enablement based on you guys’ description of the fact pattern. Your reasonings more or less tie with the cannons of claim construction, which is not in the purview of 112.. .

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