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.

35 USC 112, 2^nd 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, 2^nd paragraph: 1) The claims must set forth the subject matter the applicants regard as their inventions; and 2) The claims must particularly point out and distinctly define the metes and bounds of the subject matter that will be protected by the patent (often called the definiteness requirement). The USPTO will consider A-E to determine whether the claims do or don’t meet the §112, 2^nd paragraph requirements.

A. Claim Terminology:

• Applicants can use whatever terms they chose for defining their invention in the claims, so long as those terms are not used in ways contrary to accepted meanings in the art. (“Oval” cannot be defined as trapezoidal.).
• The use of relative terms in claims is a factual and subjective test, not an objective test. Terms that are scrutinized by the PTO include about, essentially, similar, substantially, type, and relatively.” These, and similar, terms should be defined in the specification as tho their exact meaning relative to the invention.
•  Trademarks or trade names - Trademarks or trade names identify the source of goods, not the goods themselves. While trademarks can be used in the claim language [MPEP 608.01(v)], the claim is indefinite 1) if they are used in a limitation intended as a description of a material or 2) their use cases confusion as to the scope of the claims.
• Markush Groups – A Markush group which is a way of limiting claim to the members of the group of individual elements (e.g., members “selected from the group consisting of A, B and C”) is definite. [A Markush group is a way of limiting a group to a set of individual elements. A markush group is used when a genus can be defined as a group that consists of particular individuals. It's a special/alternate way of expression that selects from a group "consisting of A, B and C" (closed-ended transition phrase). This wording is used (for among other reasons) to identify elements with a common trait, and the exact language must be used.]
• Omnibus claims – Omnibus claims which read “a device substantially as shown and describes” are indefinite. These claims are not allowed in the US because they do not express the metes and bounds of the claim.
• The claims should be as self-contained as possible and should not reference tables and figures unless necessary.

B. Consistency with Specification or Prior Art: Claims that are inconsistent with their supporting specification or the prior art cannot be considered reasonably particular and distinct, even though the terms of the claims may seem definite. [MPEP §2173.03]

Claims should be self-contained, when possible. In circumstances where an invention cannot be defined in words and it is more concise to incorporate figures or tables by reference, it is acceptable to do so.

C. Breadth of Scope: The scope of the claims must be defined clearly under section 112, 2^nd paragraph. (It is not the breadth of the scope, but whether that scope is clearly defined that matters to a sections112, 1^st paragraph issue.) An example of indefinite claim based on lack of scope includes: “between 58% and 75% of the height of the rider” when the rider’s height is undefined.

Stating specific numerical ranges in a claim does not usually raise an issue of definiteness. Exceptions include 1) narrow and broader ranges in the same claim (e.g., a length between 5 and 16 inches, preferably between 7 and 8 inches) and 2) open ended numerical ranges (e.g., at least 12%) which should be checked carefully for consistency with examples and guidelines in the rest of the disclosure. In order to avoid a §112, 2^nd paragraph rejection, keep exemplary language (specific examples) and preferences out of the claim language and limit them to the specifications.

D. Lack of Antecedent Basis: References in a claim to, for example, “said lever” or “the lever” when there is no previous reference in the claim to a lever creates uncertainty as to what the claim is referring to. A lack of antecedent basis results in indefiniteness, unless the scope of the claim could be reasonably ascertained by a skilled artisan.

E. Product and Process: A product-by process claim is a product claim defining the product in terms of the process that makes it. Such a claim is not inherently indefinite. However, a product and process claim in which both an apparatus and the process for using it are claimed is indefinite.

Claims to a process that do not include any steps to be taken in carrying out the process are usually held to be indefinite. For example, a claim to “a process for using X of claim 4 to isolate and purify Y” was found indefinite because it recites a use without givig steps for how the use is practiced.

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 pertains…to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.”

1) Written Description
The written description requirement is intended to make clear what the applicant invented and who actually created the invention. Ask yourself, “does the description clearly allow persons of ordinary skill in the art to recognize that he or she invented what is claims?”

No New Matter: “New matter” cannot be added by amendment to an applicant’s disclosure after its filing [35 USC §§ 132, 251]. The issue of new matter will arise if the claims, specification or drawings of an application are amended and the content of the amendment is not described in the application (i.e. is new matter not already contained in the claims, specification or drawings). Rewording, making inherent function explicit, making explicit material incorporated by reference not new matter.

Specific Issues:

• Amendment Affecting a Claim – Additional material introduced to an application as 1) an amendment (e.g., to the specification or claims) or 2) a new claim must be supported by the written description as filed. No new matter. An amendment to correct an obvious error does not constitute new matter where one skilled in the art would not only recognize the existence of the error, but also recognize the appropriate correction.

• Reliance on Filing Date of Patent – For claims to be entitled to the filing date of an earlier application, the description of their subject matter must meet §112, paragraph 1 requirements.

• Reliance on Priority – Claims are entitled to the foreign priority date of filing date of a provisional application if the foreign or provisional application supports the claims as required by § 112, paragraph 1.

• Changes to the Scope of the Claim – Broadening or narrowing the breadth of the claim limitations or altering a numerical range limitation after the application has been filed often results in failure to meet the written description requirement. (This is often tested as ranges given in the original specification. For example, the original specification includes ranges of 25%-75% with examples of 40% and 50%. A new claim with “at least 30% is not supported by the original claim.)

2) Enablement
The specification must describe to one skilled in the art how to make and use the invention as of the filing date. Enablement may not be met and the application may face a §112, paragraph 1 (lack of enablement) rejection if any of the following conditions (A-C) are met.

A. Requires Undue Experimentation – The test for adequate enablement (determined by the Supreme Court) has been a question of whether a person skilled in the art would have to conduct undue experimentation to make and use the invention.

Actual reduction to practice is not a necessary requirement for filing an application so long as the specification enables one of ordinary skill in the art to make and use the invention without undue experimentation.

Complex experimentation does not necessarily make it undue if the art typically engages in like experimentation. Routine or reasonable experimentation may not be undue. Often enablement will not be met because information (that could not be discovered without undue experimentation) is missing about critical parts of an invention, how to obtain those parts, or the relationship between them.

The following factors are among those to be used for determining whether necessary experimentation is “undue:”
1) The breadth of the claims;
2) The nature of the invention;
3) The state of the prior art; and
4) The level of one of ordinary skill.

B. Claims are Overly Broad – If the specification clearly recites a feature of the invention that is critical to the invention performing its intended operation, and the feature is not recited in the claims, (“purposely” making the claims broader than the enabling disclosure) a rejection based on lack of enablement will be made.

C. Fails the Utility Requirement – Relationship of enablement to the utility requirement: If a claim is not useful or inoperative (i.e., fails to meet the utility requirement) it necessarily fails to meet how-to-use requirement of enablement because the specification cannot show how to use a useless invention.

3) Best Mode
The best mode requirement is intended to ensure that the inventor does not disclose less than the most desirable form of his invention. The examiner should assume that the best mode is in fact disclosed, unless evidence arises to the contrary. In determining the adequacy of a best mode disclosure only evidence of concealment is relevant. Concealment need not be intentional. For example, the quality of the applicant’s best mode may be so poor as to effectively result in concealment.

Disclosure of less than the best mode does not invalidate a parent as long as the inventor as the time of the application did not know of the better method or did not recognize its superiority.

Additional considerations:

• A specific example is not required to fulfill the requirement – a preferred range of conditions, for instance, may be adequate;
• The disclosure need not point out which of the embodiments is considered best, as long as it is included among those disclosed;
• There is no need to update the believed best mode if priority or the filing date of a previous application is relied upon;
• The failure to disclose the best mode in the original application cannot be rectified with an amendment to the application.

“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 as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.”

• Combining references – there must be some motivation to combine; the suggestion does not have to be explicit; the reason the reference suggests for combining can be different from the actual reason
• Invention as a whole must be considered; not an element by element analysis
• Objective Considerations – affidavits or declarations containing evidence of: commercial success, unexpected results, failure of others, long felt need, skepticism of experts, copying by others
• 102(e, f, g) cannot be used as a reference (New AIPA) for obviousness when the reference subject matter and the patent app subject matter were owned by the same person or assignable to the same entity at the time invention was made

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, or concealed, or (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.”

Prior Invention

• The first to reduce to practice (RTP) wins unless 2^nd to RTP can prove earlier conception AND diligence from time prior to first’s conception to subsequent RTP or filing
• Publications are not constructive RTP
• Rule 131 can be used to swear behind prior art

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.

35 USC 102(e) – “A person shall be entitled to a patent unless (e) the invention was described in — (1) an application for patent, published under section 122(b), by another filed in the United States before the inven­tion by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the inter­national application designated the United States and was published under Article 21(2) of such treaty in the English language;”

New AIPA: Disclosure in Earlier Filed Applications (effective November 29, 2000) – A person shall be entitled to an invention unless (e) the invention was described in (not necessarily claimed)

1) An application for a patent, published under §122(b), by another filed in the US before the invention by the applicant, except that the international application filed under the treaty … shall have the effect under this subsection of a national application published … only if the international application designating the US was published … of such treaty in English; or

2) A patent granted on an application for patent by another filed in the US before the invention thereof by the applicant for patent, except that a patent shall not be deemed filed in the US for the purposes of this subsection based on the filing of an international application filed under the treaty defined in section 351(a)

US Patents can claim the benefit of an IA prior art date and have the IA filing date if:

• IA was filed on or after 11/29/00; the IA designated the US; and published in English
• US Application Publications – is prior art of the application’s US effective filing date, which can include an IA filing date, if it meets above 3 conditions

35 U.S.C. 102(d) – A person shall be entitled to a patent unless (d) the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor’s certificate filed more than twelve months before the filing of the application in the United States.

To qualify as a reference under 35 USC 102(d), a foreign application that has matured into a foreign patent. Barred from obtaining a patent if (all are yes):

1) Filed more than one year (12 months) before the effective filing date of the US application;
2) Filed by the same applicant, or his legal assigns, as the US application;
3) Issued as a patent or inventor’s certificate before the filing of an application in the US (the patent rights granted must be enforceable, but need not be published); and
4) Involves the same invention.

35 USC 102(c) – inventor intended to abandon invention. Inventor must intend to dedicate his invention to the public (a delay in the application process is not sufficient proof for abandonment).

35 USC 102(b) – “A person shall be entitled to a patent unless (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.”

102(b) aka “more than one year statutory bar” – To reject claims under §102(b) the examiner can cite anyone’s prior art or activity by a 3rd party or the applicant. This includes any patent, any printed publication, but only public use or on sale in the US more than one year before the US application date. This creates an absolute bar (dates of invention are irrelevant).

Filing Date

• The filing date is the date the application is filed with the PTO
• Continuation (§120) or Divisional (§121) applications have an earlier date if:
  • Specification contains a reference to old application
  • Old application supports new claims (§112)
  • New application is filed before old application issues or is abandoned
• Provisional application – applicant has up to 12 months to file a patent application that depends on the provisional (§111(b)). If the application is filed within the 12 month period, the application can claim priority to the provisional’s filing date.
• Foreign – an earlier filed foreign application cannot be used to overcome a §102(b) bar. Only entitled to §119 foreign filing date if during pendency of US application:
  • Foreign application is identified (application #, country filed, filing date)
  • Same inventors
  • Same invention
  • Foreign application must satisfy, via §112, new US claims

Patents as Prior Art

· US = date of issuance (not filing or publication)

· Foreign = date the rights become enforceable (MPEP §2126.01)

· Can’t be secret or private

Printed Publication – A reference is a “printed publication” if one of ordinary skill in the art can locate it with reasonable diligence. Its availability as prior art under 102(b) depends on proof of when the reference was “published” or became publicly available.

· Must be publicly accessible when it reaches the public

· Catalogued and indexed in a library

· Confidential disclosures are not printed publications

· Published patent application is a printed publication

Public Use

· Only in US

· Can be a public and hidden use (bra)

· Cannot be a secret use (inventor maintains control)

On Sale – “On sale” includes inventions that were sold, offered for sale, or tested (offered for sale and ready for patenting) in the US

• Offer – need not be accepted; details about product do not have to be disclosed; offer can be by anyone; sale need not be public; an offer to assign rights to patent is not a offer; date is when offer is mailed
• Exception – Gore where a patented method is kept secret, but there is a sale of the product from the method, such a sale is a bar if made by the patentee, but not a bar if the sale is made by a 3^rd party.
• Ready for Patenting (RTP) – invention is physically built and tested (known to work for intended purpose) or enabling drawings or other descriptions
• Experimental Use – (subjective intent of inventor) perfecting invention to see if it will work for intended purpose; extent of control is a key factor
• Note - The public sale bar applies even if the invention is misappropriated.

Overcoming a §102(b) rejection – A prior art rejection under 35 U.S.C. 102(b) is a statutory bar to patentability; a 37 CFR 1.131 affidavit cannot be used to establish prior invention when the rejection is based on a statutory bar. A 102(b) bar can be overcome by:

• Amending the claims
• Arguing claims are distinguishable from prior art
• Experimental use
• Earlier filing date (provisional, continuation, divisional);
• Application data sheet [same as 102(a)]

A 102(b) bar cannot be overcome by:

• A §119 foreign filing date cannot be used to avoid a 102(b) bar
• The 102(b) rejection cannot be overcome by evidence of unexpected results. It can be overcome by evidence that the product in the reference does not necessarily or inherently possess a characteristic of the applicant’s claimed product.

NEW AIPA §122(b) – US patent applications shall be published 18 months from the earliest filing date sought; except: Applications no longer pending; subject to secrecy; provisionals; if applicant certifies that the invention disclosed has not and will not be the subject of a foreign patent application

Note: Cannot swear behind a §102(b) reference.