How is the agreement between claims and specification considered in patent examination?
The agreement, or lack thereof, between claims and the specification is considered differently depending on the context of the examination. According to MPEP 2172:
“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.”
This principle is based on the case of In re Ehrreich. It’s important to note that this consideration is separate from rejections under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, which are addressed in MPEP § 2172.01. The distinction is crucial for patent examiners and applicants to understand the proper basis for different types of rejections related to claim language and specification content.
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