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35 USC 112: Another to know in your sleep

Earlier I mentioned how you should know, without even having to think, the 35 USC 102’s.  Probably in a close…very close second, is knowing 35 USC 112.  There are several “paragraphs” of 35 USC 112…and you’ll often encounter exam questions with something along the lines of “According to 35 USC 112, 6th paragraph.”  So, it makes sense then, that you should be aware what each specific “paragraph” refers to.  But, in actuality, you’ll only really need to know the 1st, 2nd, and 6th paragraph WELL.  Typically, these paragraphs come up when talking about an examiners rejection of an application.

So, the 1st paragraph deals with the disclosure of the application, and has three big keywords and requirements:

  1. Enablement,
  2. best mode
  3. and written description.

Enablement (simply) means that the applicant must describe and disclose enough information and detail information for one of “ordinary skill in the invention” to practice the invention. What this means, is that someone who isn’t necessarily the worlds expert, could pick up that patent application, read it, and be able to actually make, design, put into practice…what the application is talking about.

Think about it this way.  If I have the recipe for the world’s best chocolate cake, and am going to share it with you.  But, if I only write down “4 eggs, 1 cup of water, and some chocolate…” as the recipie, uhh, that really does NOT “ENABLE” you to be able to recreate the world’s best chocolate cake.  It’ll probably be the world’s worst cake.  ever.  So, that’s enablement.

Best mode means that the applicant, in the application, must set forth the best way of carrying out the invention (that was known at the time of filing the application).  What this means, is that if you know how to make the worlds best chocolate cake, but instead you share a much more difficult and convoluted way of making the cake (than the best way), you are not fulfilling the best mode.  Basically, the USPTO wants to make sure you include the best known way to make/use/etc that invention (otherwise, why should THEY protect / give you rights?!)

Written description is the odd one out.  But, it’s less tested/brought up….

The second paragraph deals with claims.  Claims, claims, claims, and outlines/talks about the claims and says that the claims must point out and distinctly claim the invention.  Basically, these are the specific “steps” in making the cake as it were.  You as the inventor, are laying out the plan/ and staking claims as to “this is how you make/use/etc” this invention

Lastly, the 6th paragraph – “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.”

Means or Step Plus Function – Although the use of the term “means” or “means for” is often a clear indication that the means or step for function rules apply, the actual determination is base coin whether the element in the claim is set forth, at least in part, by the function that it performs rather than the specific structure, material or acts that perform the function.

Simply put, this means that the examiner has the burden to find a reference containing BOTH the same function and same substance, materials, structure, or acts the same…..as the applicant’s claim.

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