From the category archives:

MPEP 2100

35 USC 112, 6th paragraph – “An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”

Means or Step Plus Function – Although the use of the term “means” or “means for” is often a clear indication that the means or step for function rules apply, the actual determination is base coin whether the element in the claim is set forth, at least in part, by the function that it performs rather than the specific structure, material or acts that perform the function.

The examiner has the initial burden of finding a reference containing both the same function and same supporting structure, materials or acts as the applicant’s claim.

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35 USC 112, 2nd Paragraph (Claim Requirements)

November 28, 2007

35 USC 112, 2nd paragraph (definiteness requirement) – “The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.”
There are two separate requirements set out by the second paragraph of §112, 2nd paragraph: 1) The claims must set forth the subject [...]

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35 USC 112, 1st paragraph (Specification)

November 28, 2007

35 USC. 112, 1st paragraph (written description, enablement and best mode requirements) – “The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such a full clear, concise, and exact terms so to enable any person skilled in the art to which it [...]

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35 USC 103

November 28, 2007

“Obviousness” – Conditions for patentability; non-obvious subject matter
35 USC 103(a) “A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter [...]

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35 USC 102(g)"Prior Invention"

November 27, 2007

35 USC 102(g) “A person shall be entitled to a patent unless (g)(1)during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, [...]

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35 USC 102(f)"Derivation"

November 27, 2007

35 USC 102(f) “A person shall be entitled to a patent unless (f) he did not himself invent the subject matter sought to be patented.” Derivation requires proof that the entire invention was previously conceived by another.

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