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Patent Laws

TITLE 35 > PART II > CHAPTER 10 > Sec. 112.

Determining Whether Your Claimed Invention Complies with 35 U.S.C. § 112, First Paragraph Requirements

Sec. 112. - Specification

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.


The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.


A claim may be written in independent or, if the nature of the case admits, in dependent or multiple dependent form.


Subject to the following paragraph, a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.


A claim in multiple dependent form shall contain a reference, in the alternative only, to more than one claim previously set forth and then specify a further limitation of the subject matter claimed. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of the particular claim in relation to which it is being considered.


An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof

 

Determining Whether Your Claimed Invention Complies with 35 U.S.C. § 112, First Paragraph Requirements (MPEP § 2161)

The first paragraph of 35 U.S.C. § 112 contains three separate and distinct requirements:
(A) adequate written description,
(B) enablement, and
(C) best mode.

  1. Adequate Written Description (MPEP § 2163)
    For the written description requirement, an applicant’s specification must reasonably convey to those skilled in the art that the applicant was in possession of the claimed invention as of the date of invention. Regents of the University of California v. Eli Lilly & Co., 119 F.3d 1559, 1566-67, 43 USPQ2d 1398, 1404-05 (Fed. Cir. 1997); Hyatt v. Boone, 146 F.3d 1348, 1354, 47 USPQ2d 1128, 1132 (Fed. Cir. 1998). The claimed invention subject matter need not be described literally, i.e., using the same terms, in order for the disclosure to satisfy the description requirement. Software aspects of inventions, for example, may be described functionally. See Robotic Vision Sys. v. View Eng’g, Inc., 112 F.3d 1163, 1166, 42 USPQ2d 1619, 1622-23 (Fed. Cir. 1997); Fonar Corp. v. General Electric Co., 107 F.3d 1543, 1549, 41 USPQ2d 1801, 1805 (Fed. Cir. 1997); In re Hayes Microcomputer Prods., Inc., 982 F.2d 1527, 1537-38, 25 USPQ2d 1241, 1248-49 (Fed. Cir. 1992). See MPEP § 2163 for further guidance with respect to the evaluation of a patent application for compliance with the written description requirement.
  2. Enabling Disclosure (MPEP § 2164)
    An applicant’s specification must enable a person skilled in the art to make and use the claimed invention without undue experimentation. The fact that experimentation is complex, however, will not make it undue if a person of skill in the art typically engages in such complex experimentation. See MPEP § 2164 et seq. for detailed guidance with regard to the enablement requirement of 35 U.S.C. § 112, first paragraph.
  3. Best Mode (MPEP § 2165) Determining compliance with the best mode requirement requires a two-prong inquiry:
    1. at the time the application was filed, did the inventor possess a best mode for practicing the invention; and
    2. if the inventor did possess a best mode, does the written description disclose the best mode such that a person skilled in the art could practice it. See MPEP § 2165 et seq for additional guidance. Deficiencies related to disclosure of the best mode for carrying out the claimed invention are not usually encountered during examination of an application because evidence to support such a deficiency is seldom in the record. Fonar, 107 F.3d at 1548-49, 41 USPQ2d at 1804-05.

     


 

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Learn about our highly effective patent research practice conducted at the USPTO by former Expert patent Examiners.

Learn about our highly effective patent research practice conducted at the USPTO by former Expert patent Examiners.

 

Smart 1st step before investing much time and money, we research and opine on your idea’s likely patentability, to also help you better distinguish your innovation from prior solutions found.

 

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