Appendix V: 35 U.S.C. 112 Specification Requirements
This appendix covers the 3 separate requirements of the specification and all additional details of 35 U.S.C. 112.
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Pre-AIA 35 U.S.C. 112 is based on 6 different paragraphs; paragraphs (1) through (6) while AIA 35 U.S.C. 112 includes paragraphs (a) through (f). This section discusses the three separate requirements for the specification under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.
Pre-AIA first paragraph or AIA (a) both state that the specification must include a written description of the invention, enablement, and best mode of carrying out the claimed invention. In addition, both state that the three requirements are separate and distinct from each other.
The specification must contain an adequate disclosure. The applicant must disclose sufficient information to put the public in possession of the invention and enable those skilled in the art to make and use the invention. The applicant must not conceal from the public the best way of practicing the invention that was known to him or her at the time of filing the patent application.
This section covers the written description requirement of the first paragraph or paragraph (a) of 35 U.S.C. 112. The essential goal of the written description requirement is to clearly convey that the applicant has invented the subject matter which is claimed.
This section covers further details of the written description as well as signs of an inadequate written description along with amendments. For instance, the written description requires an essential feature in the original claims, the feature must also be described in the specification or claims, and must not be conventional in the art or known to one of ordinary skill in art. A broad generic disclosure is not necessarily a sufficient written description of a specific embodiment, especially where the broad generic disclosure conflicts with the remainder of the disclosure.
This section covers the enablement requirement of the first paragraph or paragraph (a) of 35 U.S.C. 112. The specification must be enabling to a person “skilled in the art to which it pertains, or with which it is most nearly connected”. People have to be able to use the invention.
The inventor has to know how it works and the specification must clearly convey how to make and use the invention without undue experimentation. The topic of undue experimentation is covers in further details. Essentially, the information contained in the disclosure of an application must be sufficient enough to inform those skilled in the relevant art how to both make and use the claimed invention.
As long as the specification discloses at least one method for making and using the claimed invention that bears a reasonable correlation to the entire scope of the claim, then the enablement requirement of 35 U.S.C. 112 is satisfied.
This section covers the best mode requirement of the first paragraph or paragraph (a) of 35 U.S.C. 112. If an inventor comes up with a great idea that works well, it would violate the laws of patentability for the inventor to keep the “best mode” of making and using that invention for him/herself. This best mode requirement forces an applicant to express the full disclosure of the claimed subject matter in order to receive a patent.
The AIA did not eliminate the best mode requirement, but it does provide that, regarding patent validity or infringement proceedings, the failure to disclose the best mode should not be a basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable. Please note that this change is only applicable in patent validity or infringement proceedings, an evaluation of an application still includes compliance with the best mode requirement.
This section further discusses facts about the best mode including how a specific example of the best mode is not required. Instead, the best mode may be represented by a preferred range of conditions.
This section covers the two separate requirements for claims under the second paragraph or paragraph (b) of 35 U.S.C. 112. These requirements include that the claims must set forth the subject matter that the inventor or a joint inventor regards as the invention; and the claims must particularly point out and distinctly define the metes and bounds of the subject matter to be protected by the patent grant.
This section discusses subject matter which the inventor or a joint inventor regards as the invention. The invention set forth in the claims must be presumed to be the invention regarded by the inventor or joint inventor unless there is evidence to the contrary.
35 U.S.C. 112, second paragraph requires that a patent application specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his or her invention. This section provides further details on the claims.
The requirements of 35 U.S.C. 112(a) and (b) or the first and second paragraphs of pre-AIA 35 U.S.C. 112 are separate and distinct. This section further discusses the relationship between the requirements of 35 U.S.C. 112(a) and (b) or the first and second paragraphs of pre-AIA 35 U.S.C. 112.
This section sets forth guidelines for the examination of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, “means or step plus function” limitations in a claim. It covers the steps for determining whether a claim limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. A description is necessary to support a claim limitation which invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
This section covers how to determine 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph compliance when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. This section also covers how to determine whether 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph support exists.
A prior art element is equivalent to the corresponding element disclosed in the specification. If the examiner finds that a prior art element performs the function specified in the claim, and is not excluded by any explicit definition provided in the specification for an equivalent, the examiner should infer that the prior art element is an equivalent. It should be concluded that the claimed limitation is anticipated by the prior art element.
If the applicant disagrees with the inference of equivalence drawn from a prior art reference, the applicant may provide reasons why the prior art element should not be considered an equivalent to the invention disclosed in the specification. Further details on determining whether an applicant has met the burden of proving nonequivalence after a prima facie case is made are discussed.
This section covers related issues under 35 U.S.C. 112(a) or (b) and pre-AIA 35 U.S.C. 112, first or second paragraph.
The doctrine of equivalents arises in the context of an infringement action. If an accused product or process does not literally infringe a patented invention, the accused product or process may be found to infringe under the doctrine of equivalents. All words in a claim must be considered in judging the patentability of a claim against the prior art. The doctrine of equivalents operates to expand claim coverage beyond the literal scope of claim language.
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