Patent Bar Exam Patent Claims 5 — Questions and Answers
Question 1: Which of the following best describes an 'omnibus claim' as used in some foreign patent systems?
- A claim that covers all embodiments in the specification by direct reference to the drawings (Correct answer)
- A claim that depends from every other claim
- A claim using means-plus-function for all limitations
- A claim reciting only functional features
Correct answer: A claim that covers all embodiments in the specification by direct reference to the drawings
An omnibus claim refers directly to the specification and drawings without reciting specific elements, a practice not permitted by the USPTO.
Question 2: In patent claim drafting, antecedent basis requires that:
- Every element be introduced with 'the' before 'a'
- A term using 'the' or 'said' must have been introduced earlier in the claim with 'a' or 'an' (Correct answer)
- All claims reference the specification for definitions
- No term may appear more than once in a claim
Correct answer: A term using 'the' or 'said' must have been introduced earlier in the claim with 'a' or 'an'
Proper antecedent basis requires that a claim element be introduced with 'a' or 'an' before it is referenced with 'the' or 'said' to avoid indefiniteness.
Question 3: A claim that recites a step of 'heating the composition to a temperature sufficient to cause reaction' most likely satisfies § 112(b) when:
- The specification defines a precise temperature
- A person of ordinary skill in the art would know what temperature is required based on the disclosure (Correct answer)
- The claim separately recites the reaction temperature
- The examiner waives definiteness requirements for method claims
Correct answer: A person of ordinary skill in the art would know what temperature is required based on the disclosure
Functional language like 'sufficient to cause reaction' is definite when a person of ordinary skill would understand the scope based on the specification and knowledge in the art.
Question 4: When claims are rejected under § 112(a) for lack of written description, the examiner must show that:
- The specification is shorter than 10 pages
- One skilled in the art would not recognize that the inventor had possession of the claimed invention (Correct answer)
- The specification lacks drawings
- The application has more claims than examples
Correct answer: One skilled in the art would not recognize that the inventor had possession of the claimed invention
A written description rejection requires showing that the specification would not convey to skilled artisans that the inventor possessed the claimed invention at the time of filing.
Question 5: Which of the following situations creates a new matter issue under 35 U.S.C. § 132?
- Amending the specification to correct a typographical error
- Adding a new claim that is fully supported by the original disclosure
- Adding a new example to the specification that was not in the original application (Correct answer)
- Amending the abstract to better summarize the invention
Correct answer: Adding a new example to the specification that was not in the original application
Adding substantive content—such as a new example—to the specification that was not present in the original disclosure constitutes new matter prohibited by § 132.
Question 6: A claim reciting 'a widget having a diameter of 5 cm' and a prior art reference disclosing 'a widget having a diameter of approximately 5 cm' would likely result in:
- No anticipation because the prior art uses approximation language
- Anticipation because the claimed value falls within the prior art disclosure (Correct answer)
- A restriction requirement for two inventions
- A double patenting rejection
Correct answer: Anticipation because the claimed value falls within the prior art disclosure
When a prior art reference discloses a range or approximation that encompasses the claimed value, the prior art anticipates the claim.
Question 7: Under the broadest reasonable interpretation (BRI) standard used during prosecution, claim terms are given:
- Their narrowest meaning to protect the applicant
- The meaning a court would assign at litigation
- Their broadest reasonable meaning consistent with the specification (Correct answer)
- The plain dictionary meaning without reference to the specification
Correct answer: Their broadest reasonable meaning consistent with the specification
During prosecution, the USPTO applies BRI, giving claim terms their broadest reasonable interpretation consistent with the specification as understood by one skilled in the art.
Patent Bar Exam Patent Claims 5
Which of the following best describes an 'omnibus claim' as used in some foreign patent systems?