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2172    Subject Matter Which the Inventor or a Joint Inventor Regards as The Invention

MPEP SECTION SUMMARY This section discusses subject matter which the inventor or a joint inventor regards as the invention. The invention set forth in the claims must be presumed to be the invention regarded by the inventor or joint inventor unless there is evidence to the contrary.

  Section Frequency Chart

I.   FOCUS FOR EXAMINATION

A rejection based on the failure to satisfy this requirement is appropriate only where an inventor has stated, somewhere other than in the application as filed, that the invention is something different from what is defined by the claims.

• In other words, the invention set forth in the claims must be presumed, in the absence of evidence to the contrary, to be that which the inventor or a joint inventor regards as the invention.

II.   EVIDENCE TO THE CONTRARY

Evidence that shows that a claim does not correspond in scope with that which an inventor regards as an inventor’s invention may be found, for example, in contentions or admissions contained in briefs or remarks filed by applicant, or in affidavits filed under 37 CFR 1.132.

The content of the specification is not used as evidence that the scope of the claims is inconsistent with the subject matter which an inventor regards as his or her invention.

Agreement, or lack thereof, between the claims and the specification is properly considered only with respect to 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph; it is irrelevant to compliance with the 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.

III.   SHIFT IN CLAIMS PERMITTED

35 U.S.C. 112(b) or the second paragraph of pre-AIA 35 U.S.C. 112 does not prohibit the inventor or a joint inventor from changing what he or she regards as the invention during the pendency of the application.

MPEP SECTION SUMMARY A claim which omits matter disclosed to be essential to the invention as described in the specification or in other statements of record may be rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as not enabling. Such essential matter may include missing elements, steps or necessary structural cooperative relationships of elements described by the applicant(s) as necessary to practice the invention. In addition, a claim which fails to interrelate essential elements of the invention as defined by applicant(s) in the specification may be rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, for failure to point out and distinctly claim the invention.

A claim which omits matter disclosed to be essential to the invention as described in the specification or in other statements of record may be rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as not enabling.

• Such essential matter may include missing elements, steps or necessary structural cooperative relationships of elements described by the applicant(s) as necessary to practice the invention.
  
• In addition, a claim which fails to interrelate essential elements of the invention as defined by applicant(s) in the specification may be rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, for failure to point out and distinctly claim the invention.

 

» 2173 Claims Must Particularly Point Out and Distinctly Claim the Invention