What evidence can show that a claim does not correspond with the inventor’s invention?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-30 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. 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 as examples: Solomon v. Kimberly-Clark Corp. , In re Prater , and In re Cormany . It’s important to note that “ 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 .” Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Specification Content Is Not Used as Evidence of Claim Scope Mismatch MPEP 2172 Claims Must Correspond to Inventor’s Invention MPEP 2172 Claims Must Correspond to Inventor’s View of Invention MPEP 2172 Permitted Requirement for Claims to Correspond with Specification MPEP 2172 Inventor Can Modify View of Invention During Pendency MPEP 2172 Continuation Application Can Receive Parent Filing Date MPEP 2172 Claims Must Reflect Inventor's View of Invention MPEP 2172 Claims Must Reflect Inventor’s View of Invention MPEP 2172 Required Inventor or Assignee Must Sign Reissue Declaration MPEP 1410.01 Permitted Inventor's Oath for Reissue Application MPEP 1414.01 Required Other Related FAQs 5 FAQs Collapse What role does 35 U.S.C. 112(b) play in determining the subject matter of an invention? How is the agreement between claims and specification considered in patent examination? Can an inventor change what they regard as their invention during patent prosecution? What is the basis for rejecting claims that fa...