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StressedOut
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Re: Patent Bar Material Question Thread
« Reply #5 on: Jul 30th, 2005, 2:49pm »
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Ok, here is another one for you.
 
The problem asks which reference anticipates the claim.
 
The best answer is one that exactly anticipates (I didn't pick it because it said UP TO and did not recognize that zero is included in UP TO).
 
However the next answer recites every limitation of the claim and then adds one more (4% nickel).
 
Is that also anticipatory but not the best answer? Or does an anticipatory reference literally have to recite no more and no less than the claim?
 
Thanks for your answers so far folks.
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StressedOUT
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Re: Patent Bar Material Question Thread
« Reply #6 on: Jul 30th, 2005, 3:46pm »
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And another one...
 
Had a question where two possible right answers appeared.  
 
Evidence that a claim may not comply with the second paragraph of 112 occurs when....
 
A. Remarks by applicant. Right out of the book.
B. Lack of agreement between the claims and spec.
 
The answer is A. That is arguably the best answer. But B can and is used in the second part of a 112 analysis for definiteness.  
 
However, the MPEP also says, under the section as to what applicant regards as his invention (2172) says disagreement between the claims and spec is only considered under 112 first paragraph.
 
This seems to me to be completely at odds with 2173.03 - inconsistencies between claim and spec disclosure or prior art. Here you look at any disagreements between the spec and claims for definiteness which is a rejection under 112 second paragraph....
 
Does the MPEP contradict itself or am I missing something?
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StressedOut
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Re: Patent Bar Material Question Thread
« Reply #7 on: Jul 30th, 2005, 4:40pm »
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I'm getting the feeling the questions are not made by people who take their profession seriously.
 
I just a question where the answer to all of the exemplary language was that they were all indefinite. Yet the book clearly says under the example that they are not per se indefinite.  
 
 Undecided
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Eliz
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Posts: 107
Re: Patent Bar Material Question Thread
« Reply #8 on: Jul 30th, 2005, 8:37pm »
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on Jul 30th, 2005, 2:49pm, StressedOut wrote:
Ok, here is another one for you.
 
The problem asks which reference anticipates the claim.
 
The best answer is one that exactly anticipates (I didn't pick it because it said UP TO and did not recognize that zero is included in UP TO).
 
However the next answer recites every limitation of the claim and then adds one more (4% nickel).
 
Is that also anticipatory but not the best answer? Or does an anticipatory reference literally have to recite no more and no less than the claim?
 
Thanks for your answers so far folks.

 
Depends on the claim language.  I'm not sure exactly what question you are referring to, but I bet the claim uses "consisting of" language.  "Consisting of" is a "closed" transitional phrase, meaning that the claim encompasses only the elements recited and nothing else.  Therefore, something that includes any other element would not anticipate.  Contrast this with the "open" transitional phrase "comprising" (or "including" and a few others) which indicates that the invention can include other elements besides those specifically recited in the claim.  
 
Look up "transitional phrase" in the MPEP.  
 
Hope that helps!
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Eliz
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Posts: 107
Re: Patent Bar Material Question Thread
« Reply #9 on: Jul 30th, 2005, 8:41pm »
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on Jul 30th, 2005, 4:40pm, StressedOut wrote:
I'm getting the feeling the questions are not made by people who take their profession seriously.
 
I just a question where the answer to all of the exemplary language was that they were all indefinite. Yet the book clearly says under the example that they are not per se indefinite.  
 
 Undecided

 
I don't have the MPEP in front of me at the moment, but I think I remember this question.  While the MPEP says that exemplary claim language is not per se indefinite, I think there is also a list that lists claim language (which show up as the answers to the exam question I think you are referring to) which HAVE been found to be indefinite.  The answers to the question are slightly altered from the list in the MPEP, but they parallel the list pretty closely if I'm remembering correctly.  
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