Regards As The Invention (Sec. 112(2/b))

  • BASICS: “The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.” 35 U.S.C. § 112(2/b). “Where it would be apparent to one of skill in the art, based on the specification, that the invention set forth in a claim is not what the patentee regarded as his invention, we must hold that claim invalid under § 112, paragraph 2.” Allen (Fed. Cir. 08/01/02) (claim invalid where recites structure contrary to that described in Spec., even though mistake in claim was obvious); Juxtacomm-Texas (Fed. Cir. 09/30/13) (non-precedential) (aff’g invalidity based on trial court’s op., citing Allen). Applicant’s subjective intent is not measure of what application regarded as the invention; rather, it’s an objective reading of the application’s disclosure. Solomon (Fed. Cir. 06/30/00). This is not part of Sec. 120 effective-filing date requirement.
  • TIPS: