MPEP 2172: Difference between revisions

From wikilawschool.net. Wiki Law School does not provide legal advice. For educational purposes only.
No edit summary
 
m (Text replacement - "__TOC__" to "<div class="noautonum">__TOC__</div>")
 
(2 intermediate revisions by the same user not shown)
Line 3: Line 3:
==[[MPEP 2172|2172 Subject Matter Which Applicants Regard as Their Invention]]==
==[[MPEP 2172|2172 Subject Matter Which Applicants Regard as Their Invention]]==


<noinclude>__TOC__</noinclude>
<noinclude><div class="noautonum">__TOC__</div></noinclude>
 
======I. FOCUS FOR EXAMINATION======
I.FOCUS FOR EXAMINATION


A rejection based on the failure to satisfy this  
A rejection based on the failure to satisfy this  
Line 14: Line 13:
invention set forth in the claims must be presumed, in  
invention set forth in the claims must be presumed, in  
the absence of evidence to the contrary, to be that  
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).
which applicants regard as their invention.


II.EVIDENCE TO THE CONTRARY
======II. EVIDENCE TO THE CONTRARY======


Evidence that shows that a claim does not correspond  
Evidence that shows that a claim does not correspond  
in scope with that which applicant regards as  
in scope with that which applicant regards as  
applicant’s invention may be found, for example, in  
applicant's invention may be found, for example, in  
contentions or admissions contained in briefs or  
contentions or admissions contained in briefs or  
remarks filed by applicant, Solomon v. Kimberly-
remarks filed by applicant, or in affidavits filed under 37 CFR  
Clark Corp., 216 F.3d 1372, 55 USPQ2d 1279 (Fed.
1.132. The content of applicant's specification  
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  
is not used as evidence that the scope of the claims is  
inconsistent with the subject matter which applicants  
inconsistent with the subject matter which applicants  
regard as their invention. As noted in In re Ehrreich,  
regard as their invention. 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.
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
======III. SHIFT IN CLAIMS PERMITTED======


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


2172.01Unclaimed Essential Matter[R-1]
===2172.01 Unclaimed Essential Matter===


A claim which omits matter disclosed to be essential  
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. 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.
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  
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  
elements of the invention as defined by applicant(
and distinctly claim the invention.
s) in the specification may be rejected under 35  
<noinclude>{{MPEP Section|2171|2100|2173 }}</noinclude>
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.).

Latest revision as of 22:44, May 31, 2020

← MPEP 2171 ↑ MPEP 2100 MPEP 2173 →


2172 Subject Matter Which Applicants Regard as Their Invention[edit | edit source]

I. FOCUS FOR EXAMINATION[edit | edit source]

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.

II. EVIDENCE TO THE CONTRARY[edit | edit source]

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, or in affidavits filed under 37 CFR 1.132. 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. 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[edit | edit source]

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. 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 does not prevent the continuation application from receiving benefits of the filing date of the parent application under 35 U.S.C. 120.

2172.01 Unclaimed Essential Matter[edit | edit source]

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. 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.

← MPEP 2171 ↑ MPEP 2100 MPEP 2173 →
Retrieved from "https://www.wikilawschool.net/w/index.php?title=MPEP_2172&oldid=39189"