What evidence can show that a claim does not correspond with the inventor’s invention?

Evidence demonstrating that a claim does not correspond in scope with what an inventor regards as their invention can come from various sources. According to MPEP 2172, such evidence may be found in:

  • Contentions or admissions in briefs or remarks filed by the applicant
  • Affidavits filed under 37 CFR 1.132

The MPEP cites specific cases as examples: Solomon v. Kimberly-Clark Corp., In re Prater, and In re Cormany. It’s important to note that “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.”

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Topics: MPEP 2100 - Patentability, MPEP 2172 - Subject Matter Which The Inventor Or A Joint Inventor Regards As The Invention, Patent Law, Patent Procedure
Tags: Claim Scope, evidence, Inventor'S Invention, patent claims