PATENT BAR REVIEW OUTLINE : Parts of a Utility Patent; §112

Parts of a Utility Patent; §112

1. Drawings
   1. Drawings necessary to understand invention: f/d is when drawing is submitted to PTO
   2. Drawings helpful to understand invention: may be added later w/o affecting f/d
   3. Later submitted drawings: no new matter
   4. Drawings must show all of the claimed elements
2. Specification: §112¶1 [key idea: full disclosure of invention]:
   1. Written description
      1. Test: PHOSITA sees inventor in possession of invention
      2. Inventor may be his own lexicographer, exception: repugnant use of terminology
      3. Presumed to be adequate
   2. Enablement
      1. Test: PHOSITA makes and uses invention without undue experimentation
      2. Factors relevant in evaluating description and enablement: breath of claims, nature of invention, state of prior art, level of ordinary skill, level of predictability in the art, etc. see MPEP2164
   3. Best mode
      1. Mode considered the best subjectively by the inventor, not other people
      2. Best mode at f/d (best mode need not and cannot be updated)
      3. Must be disclosed but need not be identified (PTO does not challenge best mode)
   4. Important: failure of any written description-enablement-best mode will result in objection to application, not rejection
      1. Still OK: written description-enablement-best mode may not be fully disclosed in specification but fully disclosed in the claim – examiner may object but not reject
3. Claims: defines boundary of invention
   1. Preamble: identifies category of invention, may recite intended use/purpose
      1. Generally not limiting: elements in the body of the claim stand alone
      2. Limiting if preamble “breaths life and meaning into the claim”: body of the claim refers back to terminology in the preamble, or Jepson-type claim preamble
   2. Transitional phrase: connects preamble to body
      1. 3 types of transitions
         1. Open-ended: comprising (also: including, containing, characterized by)
         2. Closed: consisting of (also: composed of, having, being w/ interpretation)
         3. Partially closed: consisting essentially of (includes additional elements that do not materially affect the characteristics of the claimed invention, such as impurities)
      2. Reading a claim on prior art/infringing device/etc:
         1. “comprising elements ABC” reads on prior art with elements ABCD (open invention: each element is found in prior art)
         2. “consisting of elements ABC” does not read on prior art with elements ABCD (closed invention has to match prior art exactly)
         3. “consisting essentially of ABC” may read on prior art with elements ABCD if D does not affect the characteristics of said prior art (which makes prior art same as ABC)
   3. Body: list of elements and limitations
      1. Antecedent basis – §112¶2: “particularly point out and distinctly claiming”
         1. First appearance of element: a, an
         2. Further appearance of this element: the, said
      2. Only 2 ways to narrow a claim
         1. Add element: “further comprising”
         2. Add limitation (that modifies or qualifies the element): “wherein”
      3. Dependent claims – §112¶3, §112¶4
         1. Must be dependent on a preceding claim
         2. Must be narrower than that preceding claim
      4. Multiple dependent claims – §112¶3, §112¶5
         1. In the alternative only: or, one of, any of, any one of
         2. May not serve as basis for another mdc
         3. May serve as basis for another non-mdc dependent claim
      5. Two types of dominant-subservient claim relationships
         1. Subcombination (broad) – combination (narrow)
         2. Genus – species
            1. Genus must contain at least 2 species
            2. Species in a genus must be mutually exclusive
            3. Disclosure must describe species
      6. Means-plus-function clauses – §112¶6
         1. Construed to cover corresponding structure or its equivalent in the specification (link must be clear), §112¶2; but it does not cover all structures for performing recited function.
         2. Impermissible: a claiming reciting only a single means-plus-function clause (no other elements) – violation of §112¶1
         3. Permissible: two or more clauses may all be mean-plus-function: first means, second means…
         4. Must use “means (…) for”, or will not be treated as means-plus-function
         5. “Means for” phrase must not be modified by recitation of structure, or it will not be treated as means-plus-function.
      7. Process claims: method of making or using a product – relates to step-plus-function clause; also in §112¶6
         1. Permissible: a single step method claim
         2. Order of steps is not limiting unless specified
      8. viii.Step-plus-function clauses; also in §112¶6
         1. Step for performing a specified function, 
         2. Construed to cover corresponding acts in the specification section or their equivalents, §112¶2
         3. Forms the last part of a process/method claim: the result of the act, not the act itself
   4. Notable issues on claims
      1. Not permitted: claim and prior art differ only in functional recitation that is inherently performed by the prior art (reason: no novelty)
      2. Range in a claim (such as between 100 to 200)
         1. Reads on any number within the range (such as 101, 200)
         2. Dependent claim cannot broaden the range of an independent claim; violation of §112¶4
         3. Not permitted: range within a range in a claim (reason: indefinite)
      3. Negative limitations of a claim
         1. Proper if the scope of the claim is clear
         2. Not proper: absence of structure (such as a hole) is claimed as a structural element
      4. Approximate terminology allowed?: use the PHOSITA test
      5. Exemplary terminology (for example, such as): not allowed in a claim
   5. Special claim type – Markush group: creates a genus
      1. Two forms:
         1. “wherein R is selected from a group consisting of A, B, C and D”
         2. “wherein R is A, B, C or D”
      2. Prior art with even one member of the group anticipates the claim
      3. Adding members broadens the claim (reason: more species in the genus)
   6. Special claim type – Jepson-type claim (improvement of prior art): implies admission that preamble is prior art
      1. Preamble defines a prior art, and is limiting
      2. Transitional phrase: “wherein the improvement comprises”
      3. Body: add or modify element
   7. Product-by-process claim: claims a product, not a process
      1. Form: “A product is made by the process comprising steps 1, 2, 3…”
      2. Patentability depends on the product itself, not the method to make the product
      3. Reads on prior art that is the same product made by a different process
   8. Miscellaneous issues
      1. Claim must be only one sentence
      2. 4 classes of claims: machine, manufacture, composition, method
         1. Improper: mixed claim elements (method claim with structural recitation, or apparatus claim with step element)
         2. Proper: mixed limitations