Evidence 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 re Prater, 415 F.2d 1393, 162 USPQ 541 (CCPA 1969)), or in affidavits filed under 37 CFR 1.132 (see, e.g., In re Cormany, 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 re Ehrreich, 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

Evidence 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 re Prater, 415 F.2d 1393, 162 USPQ 541 (CCPA 1969)), or in affidavits filed under 37 CFR 1.132 (see, e.g., In re Cormany, 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 re Ehrreich, 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

Evidence 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 re Prater, 415 F.2d 1393, 162 USPQ 541 (CCPA 1969)), or in affidavits filed under 37 CFR 1.132 (see, e.g., In re Cormany, 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 re Ehrreich, 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

Evidence 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 re Prater, 415 F.2d 1393, 162 USPQ 541 (CCPA 1969)), or in affidavits filed under 37 CFR 1.132 (see, e.g., In re Cormany, 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 re Ehrreich, 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

35 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 re Saunders, 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 re Brower, 433 F.2d 813, 167 USPQ 684 (CCPA 1970).

35 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 re Saunders, 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 re Brower, 433 F.2d 813, 167 USPQ 684 (CCPA 1970).