How does the USPTO evaluate the subjective requirement of 35 U.S.C. 112(b)?
The subjective requirement of 35 U.S.C. 112(b) is evaluated based on the inventor’s or joint inventors’ perspective of their invention. As stated in MPEP 2171:
“The first requirement is a subjective one because it is dependent on what the inventor or a joint inventor for a patent regards as his or her invention.”
This means that patent examiners must consider whether the claims accurately reflect what the inventor(s) consider to be their invention. If there’s a discrepancy between the claimed subject matter and what the inventor(s) regard as their invention, it may lead to a rejection under 35 U.S.C. 112(b).
To learn more:
Topics:
MPEP 2100 - Patentability,
MPEP 2171 - Two Separate Requirements For Claims Under 35 U.S.C. 112 (B) Or Pre - Aia 35 U.S.C. 112,
Patent Law,
Patent Procedure,
Second Paragraph