2172 Subject Matter Which the Inventor or a Joint Inventor Regards as The Invention
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Section Frequency Chart
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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.
2172.01 Unclaimed Essential Matter
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Depending on the specific facts at issue, 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;
- under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as lacking an adequate written description;
- under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as indefinite;
- or under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as failing to claim the subject matter that the inventor or a joint inventor (or, for applications subject to pre-AIA 35 U.S.C. 112, the applicant) regards as the invention.
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.
If a claim omits matter that appears to be necessary to adequately describe the invention, or to make and use the invention, follow the guidance set forth in MPEP § 2163 et seq. and MPEP § 2164 et seq., respectively, to determine whether a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, based on an inadequate written description and/or lack of enablement should be made.
If a claim fails to interrelate essential elements of the invention as defined by applicant(s) in the specification, the claim may be rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as indefinite.
- ("[I]t is not essential to a patentable combination that there be interdependency between the elements of the claimed device or that all the elements operate concurrently toward the desired result");
- (A claim does not necessarily fail to comply with 35 U.S.C. 112, second paragraph where the various elements do not function simultaneously, are not directly functionally related, do not directly intercooperate, and/or serve independent purposes.).
Rejections under 35 U.S.C. 112(b) (or pre-AIA 35 U.S.C. 112, second paragraph) for failing to claim the subject matter that the inventor or a joint inventor regards as the invention based on the omission of essential matter must explain the basis for concluding that the inventor regards the omitted matter to be essential to the invention.
» 2173 Claims Must Particularly Point Out and Distinctly Claim the Invention
