Patent Bar Exam Patent Claims 4 — Questions and Answers
Question 1: A product-by-process claim is novel only if:
- The process steps are novel
- The product itself is novel compared to the prior art (Correct answer)
- The claim uses functional language
- The process produces a composition of matter
Correct answer: The product itself is novel compared to the prior art
Product-by-process claims are patentable only if the resulting product is novel and nonobvious, regardless of whether the process is new.
Question 2: Which of the following claim terms would most likely be found indefinite?
- Substantially parallel
- A ratio of between 2:1 and 4:1
- Approximately 10 millimeters
- Optimum temperature (Correct answer)
Correct answer: Optimum temperature
'Optimum' is a purely subjective and relative term that fails to define a clear boundary and would likely be found indefinite under § 112(b).
Question 3: Under 35 U.S.C. § 101, which of the following is NOT patent-eligible subject matter?
- A new machine
- A process for manufacturing steel
- A mathematical formula in the abstract (Correct answer)
- A composition of matter
Correct answer: A mathematical formula in the abstract
Abstract mathematical formulas, laws of nature, and natural phenomena are judicial exceptions to § 101 patent eligibility when claimed in the abstract.
Question 4: When a claim recites 'at least one of A, B, and C,' what does this phrase mean?
- At least one of each of A, B, and C must be present
- At least one from the group of A, B, or C must be present (Correct answer)
- A, B, and C are all required
- Only one of A, B, or C can be present
Correct answer: At least one from the group of A, B, or C must be present
'At least one of A, B, and C' means at least one member selected from the group consisting of A, B, and C.
Question 5: A claim limitation using the term 'about' is generally considered:
- Indefinite per se under § 112(b)
- Acceptable if the specification or art gives it a reasonable meaning (Correct answer)
- Equivalent to 'exactly'
- Only permitted in composition claims
Correct answer: Acceptable if the specification or art gives it a reasonable meaning
'About' is an acceptable approximation term when the intrinsic record or field of art gives those skilled in the art a clear understanding of the range intended.
Question 6: Which of the following is a proper single dependent claim format?
- The composition of any prior claim, wherein X is red
- The composition of claim 1, wherein X is red (Correct answer)
- A composition wherein X is red, as in claim 1
- The composition, X being red, referring to claim 1
Correct answer: The composition of claim 1, wherein X is red
37 C.F.R. § 1.75(c) requires a dependent claim to refer to a single preceding claim by number and include all its limitations.
Question 7: When an applicant amends a claim to overcome a prior art rejection and the amendment narrows claim scope, this may create prosecution history estoppel that limits the doctrine of equivalents by:
- Eliminating all infringement analysis
- Creating a presumption of surrendering equivalents related to the narrowing amendment (Correct answer)
- Expanding the literal scope of the claim
- Preventing any future claim amendments
Correct answer: Creating a presumption of surrendering equivalents related to the narrowing amendment
Under Festo Corp. v. Shoketsu, a narrowing amendment creates a presumption of surrender of equivalents for the subject matter between the original and amended claim.
Patent Bar Exam Patent Claims 4
A product-by-process claim is novel only if: