MPEP Q & A 70: Three Separate and Distinct Requirements of the Specification

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Question:

What are the three separate and distinct requirements required of the specification by 35 U.S.C. 112(a) and pre-AIA 35 U.S.C. 112, first paragraph?

Answer:

35 U.S.C. 112(a) and pre-AIA 35 U.S.C. 112, first paragraph require that the specification include the following three separate and distinct requirements:

  • A written description of the invention;
  • The manner and process of making and using the invention (the enablement requirement); and
  • The best mode contemplated by the inventor of carrying out his invention.

Chapter Details:

The answer to this question can be found in chapter 2100 of the MPEP. This chapter covers Patentability.

The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 2161 of the MPEP.  The following is a brief summary of section 2161.

2161    Three Separate Requirements for Specification Under 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, First Paragraph

Pre-AIA 35 U.S.C. 112 is based on 6 different paragraphs; paragraphs (1) through (6) while AIA 35 U.S.C. 112 includes paragraphs (a) through (f). This section discusses the three separate requirements for the specification under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.

Pre-AIA first paragraph or AIA (a) both state that the specification must include a written description of the invention, enablement, and best mode of carrying out the claimed invention. In addition, both state that the three requirements are separate and distinct from each other.

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