Chapter 2100

Question 1

Title of Chapter

Answer 1

Patentability

Question 2

35 USC 112(b) [pre-AIA 112 2nd paragraph]

Answer 2

• claims set forth subject matter applicants regard as invention
• claims particularly point out & distinctly claim invention

Question 3

35 USC 112(a) [pre-AIA 112 1st paragraph]

Answer 3

• adequate written description
• enablement
• best mode

Question 4

statutory subject matter

Answer 4

• process
• machine
• article of manufacture
• composition of matter

Question 5

judicial exceptions

Answer 5

• abstract idea
• natural phenomenon
• law of nature

Question 6

comprising

Answer 6

• inclusive, open-ended, no additional elements

- “including”, “characterized by”,

Question 7

consisting essentially of

Answer 7

• limits to specified materials that don’t materially affect basic & novel characteristics

Question 8

consisting of

Answer 8

• can’t add element/step
• synonymous w/ comprising
• excludes any step not mentioned

Question 9

“adapted tp”, “adapted for”, “wherein”, “whereby”

Answer 9

• MPEP 2111.04

- could limit

Question 10

principle of inherency

Answer 10

• if prior art device, in its normal & usual operation, would necessarily perform the method claimed, then method claimed considered anticipated by prior art device

Question 11

product-by-process claims

Answer 11

• even though claims limited & defined by process, patentability based on product itself
• claims directed to product, not process