MPEP 2172

2172 Subject Matter Which Applicants Regard as Their Invention

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).

2172.01Unclaimed Essential Matter[R-1]

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.).