How does the USPTO evaluate the subjective requirement of 35 U.S.C. 112(b)?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-29 10 Rules 5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. 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). Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Claims Must Define Subject Matter Clearly MPEP 2171 Required Claims Must Particularly Point Out Invention MPEP 2171 Required Requirement for Clarifying Indefiniteness or Invention Scope in 112(b) Rejections MPEP 2171 Recommended Claims Must Particularly Point Out Invention MPEP 2171 Patent Applied for Inventors Only MPEP 2171 Specification Must Describe Invention Subjectively MPEP 2171 Claims Must Specifically Describe Invention as Regarded by Inventor MPEP 2171 Precision Requirement for Claims MPEP 2171 Claims Must Be Precise and Unambiguous During Examination MPEP 2171 Recommended Inventor's Oath for Reissue Application MPEP 1414.01 Required Other Related FAQs 5 FAQs Collapse What actions can an examiner take if claims don&#8217;t meet the requirements of 35 U.S.C. 112(b)? What is the objective requirement for claims under 35 U.S.C. 112(b)? What is the purpose of patent examination regarding claim clarity? What are the two requirements for claims under 35 U.S.C. 112(b)? What are form paragraphs in patent rej...