MPEP 2172

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.