Q) Claims may Not Contain (4.03.47a)

by admin on April 10, 2010 · 7 comments

in Exam Questions

Question #47 from the April 2003 (AM) patent bar exam is reported by exam takers as a question in the current exam database.
47. In accordance with USPTO rules and the procedures set forth in the MPEP, claims in a patent application may not contain:
(A) chemical formulas.
(B) mathematical equations.
(C) drawings or flow diagrams.
(D) only one sentence.
(E) tables not necessary to conform with 35 USC 112.


ANSWER: (C) is the most correct answer. MPEP § 608.01, under the heading “Illustrations In The Specification,” states “[t]he specification, including any claims…may not contain drawings or flow diagrams.” With respect to answers (A) and (B), see MPEP § 608.01, under the heading “Illustrations In The Specification,” states, “[t]he specification, including any claims, may contain chemical formulas and mathematical equations…” As to answer (D), see MPEP § 608.01(m), which states that periods may not be used elsewhere in the claim except for abbreviations and that each claim begins with a capital letter and ends wit a period. As to (E), see MPEP § 608.01, which states, “The…claims may contain tables only if necessary to conform to 35 U.S.C. 112.”

{ 7 comments… read them below or add one }

1 rhmNo Gravatar August 13, 2010 at 10:18 pm

so if a claim may contain a table only if it is necessary to conform to 112 isn’t E then also a proper answer to this question? E says “tables NOT necessary to conform with 35 USC 112,” isnt that something that claims in a patent application may not contain?

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2 StephenNo Gravatar August 13, 2010 at 10:48 pm

Look at MPEP 608.01. “Claims may contain tables either if necessary to conform to 35 U.S.C. 112 or IF OTHERWISE FOUND TO BE DESIRABLE.” Therefore, you can include tables not necessary to conform to USC 112. There are a lot of tricks like this on each exam it seems, you really have to be alert.

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3 rhmNo Gravatar August 13, 2010 at 11:14 pm

oh, good point, i was being lazy and just presumed what was written in the answer above was a correct phrasing of 608.1. i suppose just checking what it actually said may have been easier than posting my question. thanks!

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4 mark pNo Gravatar August 31, 2010 at 10:24 am

is it permissible to reference a sequence in a claim i.e., as depicted in Fig. x,y,z?

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5 CassidyNo Gravatar October 7, 2010 at 1:57 pm

I am not sure if there is a right answer based on a broad interpretation of 2173.05 below.

2173.05(s) Reference to Figures or Tables

Where possible, claims are to be complete in themselves. Incorporation by reference to a specific figure or table “is permitted only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim. Incorporation by reference is a necessity doctrine, not for applicant’s convenience.” Ex parte Fressola, 27 USPQ2d 1608, 1609 (Bd. Pat. App. & Inter. 1993) (citations omitted).

Reference characters corresponding to elements recited in the detailed description and the drawings may be used in conjunction with the recitation of the same element or group of elements in the claims. See MPEP § 608.01(m).

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6 ZephNo Gravatar May 12, 2011 at 5:54 pm

MEPEP Rev. 8
608.01 (VI) now states what Cassidy mentioned in 2173.05(s)

“The specification, including any claims, may contain chemical formulas and mathematical equations, but >the written description portion of the specificationA claim may incorporate by reference to a specific figure or table where there is no practical way to define the invention in words. See MPEP § 2173.05(s).<"

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7 KFNo Gravatar March 11, 2012 at 4:53 pm

Go straight to 37 CFR 1.58 and you will find the correct answer in the first sentence. Yes to chemical and mathematical forumulas and no to drawings and flow diagrams. C!

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