Patent Bar Exam Patent Claims 2 — Questions and Answers
Question 1: Which claim type must reference another claim and further limit it?
- Independent claim
- Dependent claim (Correct answer)
- Jepson claim
- Omnibus claim
Correct answer: Dependent claim
A dependent claim must reference a prior claim and further limit the subject matter of that claim.
Question 2: Under 35 U.S.C. § 112(f), a means-plus-function claim limitation is construed to cover:
- Any structure that performs the function
- Only the structure disclosed in the specification and its equivalents (Correct answer)
- All equivalents known at the time of filing
- Structures claimed in related patents
Correct answer: Only the structure disclosed in the specification and its equivalents
§ 112(f) limits means-plus-function claims to the corresponding structure described in the specification and its structural equivalents.
Question 3: A claim that recites 'the device of claim 1, wherein the widget is red' is an example of:
- An independent claim
- A multiple dependent claim
- A single dependent claim (Correct answer)
- A Jepson claim
Correct answer: A single dependent claim
A single dependent claim depends from exactly one prior claim and adds a further limitation.
Question 4: Which transitional phrase results in the BROADEST claim scope?
- Consisting of
- Consisting essentially of
- Comprising (Correct answer)
- Including only
Correct answer: Comprising
'Comprising' is an open-ended transitional phrase that does not exclude additional unrecited elements.
Question 5: A claim is rejected under 35 U.S.C. § 112(b) when it is:
- Broader than the prior art
- Not supported by the specification
- Not particularly pointing out and distinctly claiming the invention (Correct answer)
- Written in means-plus-function format
Correct answer: Not particularly pointing out and distinctly claiming the invention
§ 112(b) requires claims to particularly point out and distinctly claim the subject matter, and failure to do so is an indefiniteness rejection.
Question 6: What is the maximum number of independent claims that can be included in an application without incurring excess claim fees?
- 1
- 3 (Correct answer)
- 5
- 20
Correct answer: 3
USPTO fees allow up to 3 independent claims and 20 total claims without additional excess claim fees.
Question 7: In a Jepson claim, the preamble recites:
- A new use for a known device
- The novel features of the invention
- The prior art elements and improvements follow 'wherein the improvement comprises' (Correct answer)
- Only functional limitations
Correct answer: The prior art elements and improvements follow 'wherein the improvement comprises'
A Jepson claim format acknowledges prior art in the preamble and introduces the novel improvement after 'wherein the improvement comprises.'
Patent Bar Exam Patent Claims 2
Which claim type must reference another claim and further limit it?