Patentability Requirements & Procedures Flashcards

Under 35 U.S.C. § 102(a)(1), a disclosure does NOT qualify as prior art if it was made by the inventor and publicly disclosed within how many months before the effective filing date?

Answer: 12 months

Under the AIA, an inventor's own disclosure made within 12 months before the effective filing date is exempt from being prior art under § 102(a)(1).

Which doctrine prevents a patent applicant from recapturing claim scope that was surrendered during prosecution through claim amendments?

Answer: Both A and C

Prosecution history estoppel and file wrapper estoppel are two names for the same doctrine preventing recapture of surrendered claim scope.

A claimed invention is considered obvious under § 103 when the differences between the claimed invention and the prior art would have been obvious to a person having ordinary skill in the art (PHOSITA) at the time of:

Answer: The effective filing date of the claimed invention

Obviousness under § 103 is evaluated from the perspective of a PHOSITA at the time of the effective filing date of the claimed invention.

Under MPEP guidelines, which of the following is NOT one of the Graham v. John Deere factors used to assess obviousness?

Answer: The date of the inventor's conception

The Graham factors are: scope of prior art, differences from prior art, level of ordinary skill, and secondary considerations (like commercial success); conception date is not a Graham factor.

A patent application claims a chemical compound. The specification discloses how to make it but provides no data on utility. Under § 101, what type of utility must be demonstrated?

Answer: Specific, substantial, and credible utility

Under § 101, an invention must have specific, substantial, and credible utility — a vague or speculative utility is insufficient.

Under 35 U.S.C. § 112(f), a means-plus-function claim element is construed to cover:

Answer: The corresponding structure in the specification and its equivalents

Under § 112(f), means-plus-function elements are limited to the corresponding structure disclosed in the specification and its structural equivalents.

When an examiner issues a final rejection, an applicant may NOT do which of the following as a matter of right?

Answer: File additional claim amendments without a showing that they raise no new issues

After a final rejection, an applicant cannot freely add amendments; amendments after final are only entered at the examiner's discretion unless they clearly place the application in condition for allowance.