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…
Read MoreWhat 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…
Read MoreCan an inventor change what they regard as their invention during patent prosecution?
Yes, an inventor or joint inventor can change what they regard as their invention during the pendency of a patent application. MPEP 2172 states: “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…
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