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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.
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Adequate Written Description (MPEP § 2163)
For the written description requirement, an applicants 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 Engg,
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.
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Enabling Disclosure (MPEP § 2164)
An applicants 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.
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Best Mode (MPEP § 2165) Determining compliance
with the best mode requirement requires a two-prong inquiry:
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at the time the application was filed, did the
inventor possess a best mode for practicing the invention; and
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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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