2172 Subject Matter Which the Inventor or a Joint Inventor Regards as The Invention [R-07.2022]
I. FOCUS FOR EXAMINATIONA rejection based on the failure of the claims to set forth the subject matter that the inventor regards as the invention 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. In reMoore, 439 F.2d 1232, 169 USPQ 236 (CCPA 1971). See also In re Zahn, 617 F.2d 261, 204 USPQ 988 (CCPA 1980).
II. EVIDENCE TO THE CONTRARYEvidence 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 (see e.g., Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 55 USPQ2d 1279 (Fed. Cir. 2000) and In rePrater, 415 F.2d 1393, 162 USPQ 541 (CCPA 1969)), or in affidavits filed under 37 CFR 1.132 (see, e.g., In reCormany, 476 F.2d 998, 177 USPQ 450 (CCPA 1973)). 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. As noted in In reEhrreich, 590 F.2d 902, 907, 200 USPQ 504, 508 (CCPA 1979), 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. For information on rejections under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, see MPEP § 2172.01
III. SHIFT IN CLAIMS PERMITTED35 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 inventor or a joint inventor regards as the invention during the pendency of the application. In reSaunders, 444 F.2d 599, 170 USPQ 213 (CCPA 1971) (permitting claims and submission of 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 had not been regarded as part of the 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 reBrower, 433 F.2d 813, 167 USPQ 684 (CCPA 1970).
2172.01 Unclaimed Essential Subject Matter [R-07.2022]
This section pertains to guidance for determining whether to make a rejection 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 his or her invention.
Depending on the specific facts at issue, a claim which omits subject 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 (see, e.g., In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976)); under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as lacking an adequate written description (see, e.g., Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 45 USPQ2d 1498 (Fed. Cir. 1998)); under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as indefinite (see, e.g., In re Venezia, 530 F.2d 956, 189 USPQ 149 (CCPA 1976)); 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 (see, e.g., In re Collier, 397 F.2d 1003, 158 USPQ 266 (CCPA 1968)). 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 § 2163et seq. (especially § 2163, subsection I, and § 2163.05) and MPEP § 2164 et seq. (especially § 2164.08(c)), 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. See In re Venezia, 530 F.2d 956, 189 USPQ 149 (CCPA 1976). But see Ex parte Nolden, 149 USPQ 378, 380 (Bd. Pat. App. & Inter. 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. & Inter. 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.). See MPEP § 2172 for guidance in determining whether a rejection based on indefiniteness would be appropriate.
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. See, e.g., Ex parte Robertson, Appeal 2016-001938, op. at 4 (PTAB 2017)(Rejection reversed because examiner failed to identify where in the specification the unclaimed elements were described as essential. Board noted that summary of the invention in the specification did not include features alleged by examiner to be essential.); Ex parte Mehta, Appeal No. 2000-0160, op. at 5-6 (Bd. Pat. App. & Inter. 2002)(Claims that did not require an inert coating failed to comply with the second paragraph of 35 U.S.C. 112 because “it is clear from Appellant’s brief that Appellant regards his invention as including the inert coating. Absent an inert electrically conducting coating, there is nothing to protect the exposed metal surfaces from damaging interactions with chemicals that lead to the problem of exploding vias as argued by Appellant.”). Features described as preferred or illustrative in the specification are not critical or essential. See, e.g., In re Goffe, 542 F.2d 564, 191 USPQ 429 (CCPA 1976)(“In determining whether an unclaimed feature is critical, the entire disclosure must be considered. Broad language in the disclosure (including the abstract) omitting an allegedly critical feature tends to rebut the argument of criticality … [and] features that are merely preferred are not critical.” Id. at 567, 191 USPQ at 432 (citations omitted).).
