How do examiners determine what invention is sought to be patented?

Examiners determine what invention is sought to be patented through a comprehensive review of the patent application. The MPEP outlines the following steps:

1. Review the complete specification, including:
   • The detailed description of the invention
   • Any specific embodiments disclosed
   • The claims
   • Any specific, substantial, and credible utilities asserted for the invention
2. Identify and understand the utility of the invention:
   • Look for statements explaining the purpose or practical application of the invention
   • Ensure the utility enables one skilled in the art to understand why the applicant asserts the invention is useful
3. Review the detailed disclosure and specific embodiments:
   • Determine the function of the invention
   • Identify features necessary to accomplish at least one asserted practical application
4. Analyze the claims:
   • Identify and evaluate each claim limitation
   • Correlate claim limitations with portions of the disclosure
   • Interpret claims using their broadest reasonable interpretation in light of the specification

The MPEP states, Prior to focusing on specific statutory requirements, examiners must begin examination by determining what, precisely, the inventor or joint inventor has invented and is seeking to patent, and how the claims relate to and define that invention.

To learn more:

• patent examination
• invention analysis
• claim interpretation
• utility