Patent Bar Exam Patent Claims 3 — Questions and Answers
Question 1: Which of the following is NOT a proper basis for an indefiniteness rejection under 35 U.S.C. § 112(b)?
- Claim uses relative terms without clear standard
- Claim is broader than what is enabled (Correct answer)
- Claim uses a term not defined in the specification
- Claim scope cannot be determined by a skilled artisan
Correct answer: Claim is broader than what is enabled
Overbreadth relative to enablement is addressed under § 112(a), not § 112(b) which specifically addresses definiteness of claim language.
Question 2: A multiple dependent claim that depends from another multiple dependent claim is:
- Permitted if it narrows the prior claim
- Permitted only for method claims
- Not permitted under USPTO rules (Correct answer)
- Permitted with examiner approval
Correct answer: Not permitted under USPTO rules
37 C.F.R. § 1.75(c) prohibits multiple dependent claims from depending from other multiple dependent claims.
Question 3: The preamble of a claim is considered limiting when:
- It is recited in the first sentence
- It gives life, meaning, and vitality to the claim (Correct answer)
- It contains more than five words
- It is written in functional language
Correct answer: It gives life, meaning, and vitality to the claim
Courts and the USPTO treat preamble language as limiting when it gives life, meaning, and vitality to the claim or when it is necessary to define the invention.
Question 4: Under the doctrine of claim differentiation, if claim 2 depends from claim 1 and adds element X, what is presumed about independent claim 1?
- Claim 1 implicitly requires element X
- Claim 1 does not require element X (Correct answer)
- Claim 1 is invalid without element X
- Claim 1 and claim 2 have identical scope
Correct answer: Claim 1 does not require element X
Claim differentiation creates a presumption that independent claims have broader scope than their dependent claims and do not require elements added by dependents.
Question 5: A method claim must recite steps that are performed in a specific order only when:
- The claim uses the transition 'comprising'
- The steps are inherently sequential or the claim recites a specific order (Correct answer)
- The claim has more than five steps
- A prior art reference discloses the same steps
Correct answer: The steps are inherently sequential or the claim recites a specific order
Method claim steps are required in a specific order only when the claim language or the nature of the steps make sequence necessary.
Question 6: Which claim format is most appropriate when claiming a new use for an old composition?
- Product-by-process claim
- Method claim (Correct answer)
- Jepson claim
- Omnibus claim
Correct answer: Method claim
A method claim directed to a new use of an existing composition is the proper way to capture the novelty in the new application of the old material.
Question 7: When an applicant adds a new claim after final rejection, the examiner may:
- Automatically enter the new claim
- Refuse to enter it if it raises new issues (Correct answer)
- Require a continuation application to present it
- Grant the claim without examination
Correct answer: Refuse to enter it if it raises new issues
After a final rejection, an examiner has discretion to refuse entry of amendments that raise new issues not previously addressed.
Patent Bar Exam Patent Claims 3
Which of the following is NOT a proper basis for an indefiniteness rejection under 35 U.S.C. § 112(b)?