What is the basis for rejecting claims that fail to set forth the subject matter the inventor regards as the invention?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-30 10 Rules 5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. A rejection based on the failure of claims to set forth the subject matter that the inventor regards as the invention is appropriate only in specific circumstances. According to MPEP 2172 , such a rejection is valid “ 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 .” This means that in the absence of evidence to the contrary, the invention set forth in the claims is presumed to be what the inventor or joint inventor regards as the invention. The MPEP cites the case of In re Moore to support this presumption. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Claims Must Reflect Inventor's View of Invention MPEP 2172 Claims Must Reflect Inventor’s View of Invention MPEP 2172 Required Specification Content Is Not Used as Evidence of Claim Scope Mismatch MPEP 2172 Requirement for Claims to Correspond with Specification MPEP 2172 Claims Must Correspond to Inventor’s Invention MPEP 2172 Claims Must Correspond to Inventor’s View of Invention MPEP 2172 Permitted Inventor Can Modify View of Invention During Pendency MPEP 2172 Continuation Application Can Receive Parent Filing Date MPEP 2172 Inventor or Assignee Must Sign Reissue Declaration MPEP 1410.01 Permitted Special Circumstances Allow Access Without Power of Attorney MPEP 103 Other Related FAQs 5 FAQs Collapse What role does 35 U.S.C. 112(b) play in determining the subject matter of an invention? How is the agreement between claims and specification considered in patent examination? Can an inventor change what they regard as their invention during patent prosecution? What evidence can show that a claim d...