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

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.

To learn more:

• patent claims
• inventor’s invention
• claim rejections
• patent examination