Presentation on theme: "The Patent Specification"— Presentation transcript:
1 The Patent Specification PATENT LAWRandy CanisCLASS 7The Patent Specification
2 The Patent Specification (Chapter 9) What must the specification describe?
3 Patent Specification Requirements 35 U.S.C. §112 requires that the Specification of a patent application must contain:(A) A written description of the invention;(B) The manner and process of making and using the invention (the enablement requirement); and(C) The best mode contemplated by the inventor of carrying out the invention.M.P.E.P. 2161
5 §112 - Specification¶1 - 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.
6 Enablement Requirement The specification must teach someone of skill in the art (1) how to make and (2) how to use the invention without undue experimentation.MPEP 2164
7 Enablement Enablement = how to make and use the invention §112 ¶1 … “requires both that the applicant disclose ‘how to make’ and ‘how to use’ the claimed invention, as well as that the specification must include a ‘written description’ of the invention.“As the essential bargain for the exclusive right of the patent, the patentee must teach the public how the invention works: the patent instrument itself must ‘enable’ other skilled artisans to practice the disclosed technology.”Purpose = ensure adequate disclosure
8 Enablement Enablement is for claimed subject matter What if a claim is not supported by the specification?
9 Gould v. Hellwarth Procedural Background Factual Background Issue: Was the disclosure sufficient to enable a person skilled in the art to make an operable device?
10 Gould v. Hellwarth“It is not questioned that the disclosure of the Q-switching feature would be adequate if the application disclosed an operable laser in which the feature could be incorporated.”
11 Gould v. Hellwarth“The brief history of the attainment of the final operating lasers gives firm support to the board’s conclusion that the Gould application was insufficient to teach a person skilled in the art how to make a laser. … The board, as well as the witnesses, considered the case in light of what would be taught to a highly trained person knowledgeable in the fields of microwave masers, spectroscopy, atomic physics and aware of published proposal for making a laser, and we do the same.”
12 Gould v. Hellwarth Ruling Holding Dicta Affirmed ruling of the Board that the disclosure was not sufficiently enabling.HoldingThe court concluded that the application did not provide an enabling disclosure of how to make the contested subject matter.Dicta
13 Undue Experimentation “Factors to be considered in determining whether a disclosure would require undue experimentation have been summarized by the board. The include (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims.”
14 Atlas Powder Co. v. E.I. Du Pont De Nemours & Co. Amount of Experimentation Required“That some experimentation is necessary does not preclude enablement; the amount of experimentation, must not be unduly extensive. Determining enablement is a question of law.”
15 Must be Enabled at the Time of Filing “To overcome a prima facie case of lack of enablement, applicant must demonstrate by argument and/or evidence that the disclosure, as filed, would have enabled the claimed invention for one skilled in the art at the time of filing.”MPEP
16 Unpredictable Arts Chemistry and Biotechnology Patent specifications within the unpredictable arts must show with reasonable specificity how to practice the invention across the entire scope of the claim.
17 Deposit Requirement“Some inventions cannot be enabled by a written explanation. The way to enable such inventions is to provide a sample. Major patent offices therefore adopted a procedure whereby inventors of novel microorganisms could fulfill statutory enablement requirements by depositing a sample of the microorganism in a facility open to the public.”
18 In re Wright“[T]he PTO set forth a reasonable basis for finding that scope of the appealed claims is not enabled by the general description and the single working example in the specification.”Burden shifted to WrightWright failed to meet the burden
19 ALZA Corp. v. Andrx Pharmaceuticals LLC Invention was a patent on a drug treatment for attention deficit and hyperactivity disorderALZA determined that MPH plasma concentrations that had ascending patterns provided greater efficacy for treating ADHD than concentrations that were constant.
20 ALZA Corp. v. Andrx Pharmaceuticals LLC Claim 1A method for treating ADD or ADHD comprising administering a dosage form comprising methylphenidate that provides a release of methylphenidate at an ascending release rate over an extended period of time.
21 ALZA Corp. v. Andrx Pharmaceuticals LLC [C]laim construction adopted by the district court requires the enablement of both osmotic and non-osmotic dosage forms and they also agree that osmotic dosage forms are enabled.Does the specification enabled a person of ordinary skill in the art to create non-osmotic oral dosage forms without undue experimentation?
22 ALZA Corp. v. Andrx Pharmaceuticals LLC SpecificationFocuses on how osmotic systems can be adapted to create an ascending release dosage form to treat ADHD.Mentions non-osmotic dosage forms.Andrx’s attempted to limit the scope of the claim to osmotic dosage forms
23 ALZA Corp. v. Andrx Pharmaceuticals LLC District CourtAsserted claims are invalid for lack of enablement because the specification does not enable the full scope of claim 1, which covers both osmotic and non-osmotic dosage forms.Claim 1 invalid for lack of enablement
24 ALZA Corp. v. Andrx Pharmaceuticals LLC Issue on Fed. Circ.Specification would have enabled a person of ordinary skill in the art to create non-osmotic oral dosage forms—namely, tablets and capsules—with ascending release rates without undue experimentation at the time of filing.
25 ALZA Corp. v. Andrx Pharmaceuticals LLC “Whether undue experimentation would have been required to make and use an invention, and thus whether a disclosure is enabling under 35 U.S.C. § 112, ¶ 1, is a question of law that we review de novo, based on underlying factual inquiries that we review for clear error.”
26 ALZA Corp. v. Andrx Pharmaceuticals LLC “Because patents are presumed valid, lack of enablement must be proven by clear and convincing evidence.”A reasonable amount of experimentation is ok, but it can’t be undue.“[T]he rule that a specification need not disclose what is well known in the art is ‘merely a rule of supplementation, not a substitute for a basic enabling disclosure.’”
27 ALZA Corp. v. Andrx Pharmaceuticals LLC “[W]hen there is no disclosure of any specific starting material or of any of the condition under which a process can be carried out, undue experimentation is required.”“Patent protection is granted in return for an enabling disclosure of an invention, not for vague intimations of general ideas that may or may not be workable.”
28 ALZA Corp. v. Andrx Pharmaceuticals LLC “ALZA successfully argued to the district court that the claims encompassed both osmotic and non-osmotic dosage forms. However, ALZA’s patent specification does not enable the full scope of the claims, namely non-osmotic oral dosage forms with ascending release rates.”“We conclude that the asserted claims are invalid for lack of enablement under 35 U.S.C. § 112, ¶ 1.”
29 Magsil Corp. and MIT v. Hitachi Case HistoryD.C. DelawareSummary judgment that the claims are invalid for lack of enablementPanel Fed. Cir. of Rader, O’Malley, and ReynaAffirmed
30 Magsil Corp. and MIT v. Hitachi Inventionread-write sensors for computer hard disk drive storage systems
31 Magsil Corp. and MIT v. Hitachi Claim 1 1. A device forming a junction having a resistance comprising: a first electrode having a first magnetization direction, a second electrode having a second magnetization direction, and an electrical insulator between the first and sec-ond electrodes, wherein applying a small magnitude of electromagnetic energy to the junction reverses at least one of the magnetization directions and causes a change in the resistance by at least 10% at room temperature.
32 Magsil Corp. and MIT v. Hitachi “Enablement is a question of law based on underlying factual findings. … A party must prove invalidity based on non-enablement by clear and convincing evidence.”EnablementEnsures adequate disclosure of the claimed inventionPrevents claims broader than the disclosed invention
33 Magsil Corp. and MIT v. Hitachi “The scope of the claims must be less than or equal to the scope of the enablement to ensure that the public knowledge is enriched by the patent specification to a degree at least commensurate with the scope of the claims.”
34 Magsil Corp. and MIT v. Hitachi “[T]he specification at the time of filing must teach one of ordinary skill in the art to fully perform this method across that entire scope.”
35 Magsil Corp. and MIT v. Hitachi “[T]this field of art has advanced vastly after the filing of the claimed invention. The specification containing these broad claims, however, does not contain sufficient disclosure to present even a remote possibility that an ordinarily skilled artisan could have achieved the modern dimensions of this art. Thus, the specification enabled a marginal advance over the prior art, but did not enable at the time of filing a tunnel junction of resistive changes reaching even up to 20%, let alone the more recent achievements above 600%.”
36 Magsil Corp. and MIT v. Hitachi “The asserted claims of the ’922 patent cover resistive changes from 10% up to infinity, while the ’922 patent specification only discloses enough information to achieve an 11.8% resistive change. … Yet, the claims covered changes far above 20% or 100% even when the inventors could not explain any way to achieve these levels. As MagSil’s expert Dr. Murdock testified, since 1995 when the specification was filed, resistive changes now stretch up to above 600%.”
37 Magsil Corp. and MIT v. Hitachi “The ’922 patent specification only enables an ordinarily skilled artisan to achieve a small subset of the claimed range. The record contains no showing that the knowledge of that artisan would permit, at the time of filing, achievement of the modern values above 600% without undue experimentation, indeed without the nearly twelve years of experimentation necessary to actually reach those values. The enablement doctrine’s prevention of over broad claims ensures that the patent system pre-serves necessary incentives for follow-on or improvement inventions.”
38 Enablement PointsMake sure to include at least some dependent claims (or, preferably, an independent claim) with a range that is clearly within the grasp of the specificationIf you are going to include a more expansive range, include details in the specification on how such a range could be achieved
40 Written Description Requirement To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention.MPEP 2163
41 Written Description“112, ¶ 1 ensures that, as of the filing date, the inventor conveyed with reasonable clarity to those of skill in the art that he was in possession of the subject matter of the claims.” Union Oil Co. of Calif. V. Atlantic Richfield Co., 208 F.3d 989 (Fed. Cir. 2000)Why isn’t the written description requirement separately described in the book?“When new claims are added after the original filing date—either in their entirety or through alterations to earlier claims—the ‘written description’ test requires that the augmented material must find a basis somewhere in the original application as filed.
42 Written Description Violations Broad ClaimsClaims cannot cover inventions never contemplated or disclosed by the inventorNarrow ClaimsEach limitation must be supported by written descriptionAddition of New MatterTo obtain benefit of earlier-filed application, claims of a continuation (or CIP) must be supported by original specification
43 New Matter?35 U.S.C. §132(a) – “…No amendment shall introduce new matter into the disclosure of the invention.”“… [T]o amend a claim or add a new claim without encountering the new matter proscription, an applicant must show that the original application disclosed or contained the subject matter included in the amendment.”
44 Design Patent 35 U.S.C. 171. Patents for designs. Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title. The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.
45 Design Patents v Utility In general terms, a “utility patent” protects the way an article is used and works (35 U.S.C. 101), while a “design patent” protects the way an article looks (35 U.S.C. 171). The ornamental appearance for an article includes its shape/configuration or surface ornamentation *>applied to< the article, or both. Both design and utility patents may be obtained on an article if invention resides both in its utility and ornamental appearance. While utility and design patents afford legally separate protection, the utility and ornamentality of an article may not be easily separable. ** >Articles of manufacture may possess both functional and ornamental characteristicsSee MPEP Distinction Between Design and Utility Patents
46 Design Patent See MPEP 1500 35 U.S.C. 171. Patents for designs. Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title. The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided. The design for an article consists of the visual characteristics or aspect displayed by the article. It is the appearance presented by the article which creates an impression through the eye upon the mind of the observer.14 years from date of grant1 claim - “The ornamental design for (the article which embodies the design or to which it is applied) as shown.”No maintenance fees
47 Design PatentMPEP 1502“In a design patent application, the subject matter which is claimed is the design embodied in or applied to an article of manufacture (or portion thereof) and not the article itself. …“Since a design is manifested in appearance, the subject matter of a design patent application may relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation. Design is inseparable from the article to which it is applied and cannot exist alone merely as a scheme of surface ornamentation. It must be a definite, preconceived thing, capable of reproduction and not merely the chance result of a method.”
48 Design Patent 1502.01 Distinction Between Design and Utility Patents In general terms, a “utility patent” protects the way an article is used and works (35 U.S.C. 101), while a “design patent” protects the way an article looks (35 U.S.C. 171). The ornamental appearance for an article includes its shape/configuration or surface ornamentation applied to the article, or both. Both design and utility patents may be obtained on an article if invention resides both in its utility and ornamental appearance.
49 Vas-Cath Inc. v. Mahurkar Procedural BackgroundFactual BackgroundIssue:Can a design application’s drawings provide a §112 first paragraph “written description” adequate to support various claims?
50 Vas-Cath Inc. v. Mahurkar “The purpose of the ‘written description’ requirement is broader than to merely explain how to ‘make and use’; the applicant must also convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention.”
51 Vas-Cath Inc. v. Mahurkar RulingThe Court of Appeals reversed the district court’s grant to summary judgment.HoldingDrawings that convey with reasonable clarity to those of ordinary skill in the art the invention may be used to satisfy §112 first paragraph.Dicta
52 No Support in Specification for Claims “When claimed subject matter is only presented in the claims and not in the specification portion of the application, the specification should be objected to for lacking the requisite support for the claimed subject matter…”MPEP 2146
53 The Gentry Gallery, Inc. v. The Berkline Corp. What is the invention?a unit of a sectional sofa in which two independent reclining seats face in the same direction. A console is between two recliners which face in the same direction and accommodates the controls for both reclining seatsWhere is the control means located?“[T]he patent’s disclosure does not support claims in which the location of the recliner controls is other than on the console.”How is the disclosure written?
54 The Gentry Gallery, Inc. v. The Berkline Corp. 1. A sectional sofa comprising:a pair of reclining seats disposed in parallel relationship with one another in a double reclining seat sectional sofa section being without an arm at one end ,each of said reclining seats having a backrest and seat cushions and movable between upright and reclined positions ,a fixed console disposed in the double reclining seat sofa section between the pair of reclining seats and with the console and reclining seats together comprising a unitary structure,said console including an armrest portion for each of the reclining seats; said arm rests remaining fixed when the reclining seats move from one to another of their positions,and a pair of control means, one for each reclining seat; mounted on the double reclining seat sofa section . . .
55 The Gentry Gallery, Inc. v. The Berkline Corp. How was the disclosure drafted?What was the concern?“[A] claim may be broader than the specific embodiment disclosed in a specification.”“An applicant is entitled to claims as broad as the prior art and his disclosure will allow.”
56 The Gentry Gallery, Inc. v. The Berkline Corp. “We agree with Gentry that the term ‘fixed’ requires only that the console be rigidly secured to its two adjacent recliners. The term ‘fixed’ and the explanatory clause ‘with the console and reclining seats together comprising a unitary structure’ were added during prosecution to overcome a rejection based on a sectional sofa in which the seats were not rigidly attached. Thus, because the term "console" clearly refers to the complete section between the recliners, the term ‘fixed’ merely requires that the console be rigidly attached to the recliners.“There is no dispute that Berkline's center seat and recliners form a unitary structure, we conclude that the ‘fixed’ limitation is met by Berkline's sofas.”
57 The Gentry Gallery, Inc. v. The Berkline Corp. “We agree with Berkline that the patent's disclosure does not support claims in which the location of the recliner controls is other than on the console.”
58 The Gentry Gallery, Inc. v. The Berkline Corp. “In this case, the original disclosure clearly identifies the console as the only possible location for the controls. It provides for only the most minor variation in the location of the controls, noting that the control ‘may be mounted on top or side surfaces of the console rather than on the front wall without departing from this invention.’ '244 patent, col. 2, line 68 to col. 3, line 3. No similar variation beyond the console is even suggested. Additionally, the only discernible purpose for the console is to house the controls.”
59 The Gentry Gallery, Inc. v. The Berkline Corp. “[A] narrow disclosure will limit claim breadth.”How should disclosures be written?“An applicant is entitled to claims as broad as the prior art and his disclosure will allow.”
61 Best ModeThe specification shall set forth the best mode contemplated by the inventor of carrying out his/her invention.Is this an objective or subjective standard?
62 Best ModeThe best mode of carrying out the invention must be disclosed.The test for a best mode violation is a two prong inquiry.PRONG 1 (Subjective) – Did the inventor possess a best mode for practicing the invention?PRONG 2 (Objective) – Does the written description disclose the best mode so that a person skilled in the art could practice it?MPEP 2165
63 Chemcast Corp. v. Arco Industries Corp. Procedural BackgroundAppeal from district court of claim invalidity because of failure to disclose best mode.Factual BackgroundIssue:Is Chemcast’s patent invalid for failure to provide the best mode as required by §112?
64 Chemcast Corp. v. Arco Industries Corp. §112 … “requires an inventor to disclose the best mode contemplated by him, as of the time he executes the application, of carrying our his invention. Manifestly, the sole purpose of this  requirement is to restrain inventors from applying for patents while at the same time concealing from the public preferred embodiments of their inventions which they have in fact conceived.”
65 Chemcast Corp. v. Arco Industries Corp. “The best mode inquiry focuses on the inventor’s state of mind as of the time he filed his application—a subjective, factual question. … Our statements that ‘there is no objective standard by which to judge the adequacy of a best mode disclosure,’ and that ‘only evidence of concealment (accidental or intentional) is to be considered,’ … assumed that both the level of skill in the art and the scope of the claimed invention were additional, objective metes and bounds of the best mode disclosure.”
66 Chemcast Corp. v. Arco Industries Corp. “[O]ne must consider the level of skill in the relevant art in determining whether a specification discloses the best mode. We have consistently recognized that whether a best mode disclosure is adequate, that is, whether the inventor concealed a better mode of practicing his invention that he disclosed, is a function of not only what the inventor knew but also how one skilled in the art would have understood his disclosure.”“The other objective limitation … is … the scope of the claimed invention.”
67 Chemcast Corp. v. Arco Industries Corp. TestAt the time the inventor filed his patent application, did the inventor know of a mode of practicing the claimed invention that he/she considered to be better than any other?If so contemplated, is the disclosure adequate to enable one skilled in the art to practice the best mode (i.e., has the best mode been concealed)?
68 Chemcast Corp. v. Arco Industries Corp. RulingAffirmation that the claim is invalid since inventor failed to disclose his best mode.Holding“[W]here the inventor has failed to disclose the only mode he ever contemplated of carrying out his invention, the best mode requirement is violated.”Dicta
69 Best Mode Violation?What May Establish Subjective Evidence of Concealment?Inventor testimonyInventor’s lab notebookInventor’s contemporaneous articles, notes, speeches, etc.?Other corporate disclosures cannot impute knowledge to inventor (Glaxo Inc. v. Novopharm Ltd., 52 F.3d 1043 (Fed. Cir. 1995)Commercial embodiment is not necessarily the best mode. (Zygo Corp. v. Wyko Corp., 79 F.3d 1563 (Fed. Cir. 1996)
70 Best ModeSpecific instrumentalities and techniques as the best way of carrying out the invention.“Compliance with the best mode requirement is a question of fact, and invalidity for failure of compliance requires proof by clear and convincing evidence that the inventor knew of and concealed a better mode of carrying out the invention than was set forth in the specification.” Scripps Clinic & Research Foundation v. Genentech, Inc., 927 F.2d 1565, 18 USPQ2d 1001, 18 USPQ2d 1896 (Fed. Cir. 1991)
71 Best ModeThe disclosure of routine details is unnecessary because they are readily apparent to one of ordinary skill in the art. Eli Lilly & Co. v. Barr Laboratories, Inc., 251 F.3d 955, 58 USPQ2d 1865 (Fed. Cir. 2001)An inventor need not disclose a mode for obtaining unclaimed subject matter unless the subject matter is novel and essential for carrying out the best mode of the invention.”
72 Best Mode Post AIA – Major Questions Is the best mode still a requirement?Does this affect patent process before the USPTO?Can an examiner still reject a patent application under the best mode requirement?
74 Parts of the Specification 37 CFR 1.77 Arrangement of application elements.…(b) The specification should include the following sections in order:(1) Title of the invention, which may be accompanied by an introductory portion stating the name, citizenship, and residence of the applicant (unless included in the application data sheet).(2) Cross-reference to related applications (unless included in the application data sheet).(3) Statement regarding federally sponsored research or development.(4) The names of the parties to a joint research agreement.
75 Parts of the Specification (5) Reference to a "Sequence Listing," a table, or a computer program listing appendix submitted on a compact disc and an incorporation-by-reference of the material on the compact disc (see § 1.52(e)(5)). The total number of compact discs including duplicates and the files on each compact disc shall be specified.(6) Background of the invention.(7) Brief summary of the invention.(8) Brief description of the several views of the drawing.(9) Detailed description of the invention.(10) A claim or claims.(11) Abstract of the disclosure.
76 Title of the Invention Title Requirements May not exceed 500 characters in lengthMust be as short and specific as possible.37 CFR 1.72Example TitlesModular Data AnalysisMethod and System for Database Archiving
77 Cross-Reference to Related Applications Used to identify when inventions are related. For example, (1) multiple applications may be filed on the same specification with different sets of claims, or (2) a nonprovisional patent application may claim priority to one or more previously filed provisional patent applications.Example cross-referenceCROSS-REFERENCE TO RELATED APPLICATIONSThis application claims the benefit of United States Provisional Patent Applications entitled “Encrypted Data Parsing ”, Serial No.: 60/XXX,XXX, filed 5 January 2007, and “Method and System for Voice Restoration”, Serial No.: 60/XXX,XXX, filed 5 April 2007, the entire contents of which are herein incorporated by reference.
78 Background of the Invention According to the MPEP, the Background of the Invention ordinarily includes (1) Field of the Invention and (2) Description of the Related Art. §608.01(c)However, the inclusions as suggested by the MPEP are not mandated. Because of concerns arising out of case law, the Background of the Invention is no longer drafted in this way.
79 Field of the Invention Usage When included, in the application should be identified as “Field” or “Technical Field” instead of “Field of the Invention”.Should include a general recitation to avoid narrowly limiting the patent.ExampleThis application relates to a method and system for data processing, and more specifically to methods and systems for differential data encoding and decoding.
80 Background of the Invention UsageWhen included, in the application should be identified as “Background” instead of “Background of the Invention”.Should not include any limiting language, description of prior art, or identification of something as being prior art.
81 Summary of the Invention UsageWhen included, in the application should be identified as “Summary” instead of “Summary of the Invention”.Should include one or more paragraphs with short sentences providing support for the independent claims. The language of the paragraphs should directly correlate to language in the claims.
82 Summary of the Invention Example ClaimA method comprising:providing a multimedia lecture to a plurality of attendees;providing a feedback request to the plurality of attendees; andreceiving feedback from at least one attendee of the plurality of attendees in response to the feedback request.
83 Summary of the Invention Example SummarySUMMARYIn an example embodiment, a multimedia lecture may be provided to a plurality of attendees. A feedback request may be provided to the plurality of attendees. Feedback may be received from at least one attendee of the plurality of attendees in response to the feedback request.
84 Abstract“The purpose of the abstract is to enable the United States Patent and Trademark Office and the public generally to determine quickly from a cursory inspection the nature and gist of the technical disclosure.”
85 Abstract Requirements: Include in the application (preferably following the claims)Under the heading “Abstract” or “Abstract of the Disclosure”Not exceed 150 words in length.
86 AbstractBecause of potential use of the Abstract as a limitation by a court, the abstract should be broad and usually reflect the broadest claim.Also consider some boilerplate language to indicate its intended use. For example:“The Abstract of the Disclosure is provided to comply with 37 C.F.R. §1.72(b), requiring an abstract that will allow the reader to quickly ascertain the nature of the technical disclosure. It is submitted with the understanding that it will not be used to interpret or limit the scope or meaning of the claims.”
87 Parts of the Description Consider including the following drawings for the application:General system overview figures (1 or 2 total)Subsystem figures with modulesFlowchartsDemonstrative pictures included throughoutSpecific system, subsystem, or other boilerplate figuresComputer System
89 Hardware Diagrams for System Claims Support Provide structure for the software in the applicationCreate modules to correspond to one or more steps of the various claimsGroup the modules into one or more subsystemsTie the modules of a subsystem together
91 Hardware Diagrams for System Claims Support ExampleA lecturing subsystem 116 may include a multimedia lecture provider module 302, a feedback request provider module 304, and/or a feedback receiver module Other modules may also be used.The multimedia lecture provider module 302 provides a multimedia lecture to a number of attendees. The feedback request provider module 304 provides a feedback request to the plurality of attendees. The feedback receiver module 306 receives feedback from one or more attendee in response to the feedback request provided by the feedback provider module 304.
92 FlowchartsEach independent claim should be fully described in a single figureDependent claims may also be included with the single figure or may be included in an additional figure.
94 FlowchartsExampleFIG. 4 illustrates a method 400 for feedback processing according to an example embodiment. The method 400 may be performed by the encoder 106 (see FIG. 1) or otherwise performed.A multimedia lecture is provided to a number of attendees at block 402. A feedback request is provided to the attendees at block At block 406, feedback is received from one or more attendees in response to the feedback request.
95 Screen Shots/User Interface Pictures can be valuable for demonstrating invention to Examiner or establishing supportScreen shots may be rejected and may need to be made into illustrations
97 Sequence Listing and Sequence Identifiers 37 CFR 1.821(c) requires that applications containing nucleotide and/or amino acid sequences that fall within the above definitions, contain, as a separate part of the disclosure on paper or compact disc, a disclosure of the nucleotide and/or amino acid sequences, and associated information, using the format and symbols that are set forth in 37 CFR and 37 CFR This separate part of the disclosure is referred to as the "Sequence Listing." The "Sequence Listing" submitted pursuant to 37 CFR 1.821(c), whether on paper or compact disc, is the official copy of the "Sequence Listing.“See MPEP
98 General GuidanceMake sure to supplement the specification with other information not in the claims to satisfy other requirements (e.g., best mode) and to provide a fall back position (e.g., a more narrow limitation)Use a common number to identify the same object throughout the specificationBe careful regarding the use of certain words including must, require, necessary that could later be used to limit the scope of a claim
99 What to Include Appropriate terminology for technology and industry DefinitionsEmbodimentsLots of appropriate details
100 What to AvoidPatent ProfanityObjects of the invention
101 Patent Profanity Make very limited use of the term “invention”; Terms to avoid include preferred, preferably, must, require, present invention, “i.e.”, shall, important, object, object of the inventionOther possible terms and phrases to avoid include “the inventors have found”, “have been developed”, useful, presently, innovative, significant
102 ProgramCompletedAll course materials - Copyright Randy L. Canis, Esq.