2172 Subject Matter Which the Inventor or a Joint Inventor Regards as The Invention [R-11.2013]
I. FOCUS FOR EXAMINATION
A rejection based on the failure to satisfy this requirement is appropriate only where an inventor has stated, somewhere other than in the application as filed, that the invention is something different from what is defined by the claims. In other words, the invention set forth in the claims must be presumed, in the absence of evidence to the contrary, to be that which the inventor or a joint inventor regards as the invention. In re Moore, 439 F.2d 1232, 169 USPQ 236 (CCPA 1971).
II. EVIDENCE TO THE CONTRARY
Evidence that shows that a claim does not correspond in scope with that which an inventor regards as an inventor’s invention may be found, for example, in contentions or admissions contained in briefs or remarks filed by applicant (see e.g., Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 55 USPQ2d 1279 (Fed. Cir. 2000) and In re Prater, 415 F.2d 1393, 162 USPQ 541 (CCPA 1969)), or in affidavits filed under 37 CFR 1.132 (see, e.g., In re Cormany, 476 F.2d 998, 177 USPQ 450 (CCPA 1973)). 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. As noted in In re Ehrreich, 590 F.2d 902, 200 USPQ 504 (CCPA 1979), 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; it is irrelevant to compliance with the 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
III. SHIFT IN CLAIMS PERMITTED
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 he or she regards as the invention during the pendency of the application. In re Saunders, 444 F.2d 599, 170 USPQ 213 (CCPA 1971) (permitting claims and submission of comparative evidence with respect to claimed subject matter which originally was only the preferred embodiment within much broader claims (directed to a method)). The fact that claims in a continuation application were directed to originally disclosed subject matter which had not been regarded as part of the invention when the parent application was filed was held not to prevent the continuation application from receiving benefits of the filing date of the parent application under 35 U.S.C. 120. In re Brower, 433 F.2d 813, 167 USPQ 684 (CCPA 1970).