Patentability 101, 103, and 112

102 not included because that's too big of a topic and needs its own set

When reaching a determination on obviousness pursuant to 35 U.S.C. 103, does all evidence need to be considered with equal weight?

No. For example, if the evidence is presented in a non-timely manner. Office personnel must consider the appropriate weight to be accorded to each piece of evidence

True or False:

A mere reason to combine in conjunction with the technical ability to combine does not generally lead to a conclusion that the claimed invention would have been obvious

False

True or False:
Even when only a small number of possible choices exist , the obvious-to-try line of reasoning is not always appropriate

True - obvious-to-try rationale is not appropriate if, upon consideration of all evidence, the outcome would not have been reasonably predictable and the inventor would not have had a reasonable expectation of success

What is considered a “finite number”?

A small and easily traversed number of options

Is evidence of commercial success relevant to an obviousness determination?

Yes, commercial success is relevant if there is a nexus between the success of the product and the claimed invention.

What are the factors for determining whether a method claim that recites or inherently requires a machine or apparatus embodies merely an unpatentable abstract idea without “significantly more” being presented in the claim(s)?

1. The particularity or generality of the elements of the machine or apparatus

2. Whether the machine or apparatus implements the steps of the method.

3. Whether its involvement is extrasolution activity or a field-of-use

What are the 3 groupings of abstract ideas?

1. Mathematical concepts

2. Certain methods of organizing human activity

3. Mental processes

What is 112(f) about?

Element in claim for a combination. aka means plus function claim

Which non-structural terms have been found to potentially invoke 112(f)?

1. “mechanism for”

2. “module for”

3. “device for”

4. “unit for”

5. “component for”

6. “element for”

7. “member for”

8. “apparatus for”

9. “machine for”

10. “system for”

11. “means for”

12. “step for”

Which non-structural terms have NOT been found to invoke 112(f)?

1. "circuit for''

2. "detent mechanism''

3. "digital detector for''

4. "reciprocating member,'

5. "connector assembly''

6. "perforation''

7. "sealingly connected joints''

8. "eyeglass hanger member''

When will examiners apply 112(f) to a claim limitation?

1. The claim limitation uses the phrase "means for" or "step for" or a non-structural term that does not have a structural modifier

2. the phrase "means for" or "step for" or the non-structural term recited in the claim is modified by functional language

3. the phrase "means for" or "step for" or the non-structural term recited in the claim is not modified by sufficient structure, material, or acts for achieving the specified function.

When is the AIA date?

March 16, 2013

What does an affidavit or declaration under 37 CFR 1.130 do?

Remove prior art that is eligible as an exception