Editing MPEP 2172

<noinclude>{{MPEP Section|2171|2100|2173 }}</noinclude>

==[[MPEP 2172|2172 Subject Matter Which Applicants Regard as Their Invention]]==

<noinclude>__TOC__</noinclude>

I.FOCUS FOR EXAMINATION

A rejection based on the failure to satisfy this 
requirement is appropriate only where applicant 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 applicants regard as their invention. In reMoore, 439 F.2d 1232, 169 USPQ 236 (CCPA 1971).

II.EVIDENCE TO THE CONTRARY

Evidence that shows that a claim does not correspond 
in scope with that which applicant regards as 
applicant’s invention may be found, for example, in 
contentions or admissions contained in briefs or 
remarks filed by applicant, Solomon v. Kimberly-
Clark Corp., 216 F.3d 1372, 55 USPQ2d 1279 (Fed. 
Cir. 2000); In re Prater, 415 F.2d 1393, 162 USPQ 
541 (CCPA 1969), or in affidavits filed under 37 CFR 
1.132, In re Cormany, 476 F.2d 998, 177 USPQ 450 
(CCPA 1973). The content of applicant’s specification 
is not used as evidence that the scope of the claims is 
inconsistent with the subject matter which applicants 
regard as their invention. As noted in In re Ehrreich, 
590 F.2d 902, 200 USPQ 504 (CCPA 1979), agreement, 
or lack thereof, between the claims and the 
specification is properly considered only with respect 
to 35 U.S.C. 112, first paragraph; it is irrelevant to 
compliance with the second paragraph of that section.

III.SHIFT IN CLAIMS PERMITTED

The second paragraph of 35 U.S.C. 112 does not 
prohibit applicants from changing what they regard as 
their invention during the pendency of the application. 
In re Saunders, 444 F.2d 599, 170 USPQ 213 (CCPA 
1971) (Applicant was permitted to claim and submit 
comparative evidence with respect to claimed subject 
matter which originally was only the preferred 
embodiment within much broader claims (directed to 
a method).). The fact that claims in a continuation 
application were directed to originally disclosed subject 
matter which applicants had not regarded as part 
of their invention when the parent application was 
filed was held not to prevent the continuation application 
from receiving benefits of the filing date of the 
parent application under 35 U.S.C. 120. In re Brower, 
433 F.2d 813, 167 USPQ 684 (CCPA 1970).

===2172.01 Unclaimed Essential Matter===

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, first paragraph, as not enabling. In re 
Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 
1976). See also MPEP §
2164.08(c). 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, second paragraph, for failure to point out 
and distinctly claim the invention. See In re Venezia, 
530 F.2d 956, 189 USPQ 149 (CCPA 1976); In re 
Collier, 397 F.2d 1003, 158 USPQ 266 (CCPA 1968). 
But see Ex parte Nolden, 149 USPQ 378, 380 (Bd. 
Pat. App. 1965) (“[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”); Ex parte Huber, 148 USPQ 447, 448-49 (Bd. 
Pat. App. 1965) (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.).