¶ 7.34 Rejection, 35 U.S.C. 112, 2nd Paragraph, Failure To Claim Applicant’s Invention
Claim [1] rejected under 35 U.S.C. 112, second paragraph, as failing to set forth the subject matter which applicant(s) regard as their invention. Evidence that claim [2] fail(s) to correspond in scope with that which applicant(s) regard as the invention can be found in the reply filed [3]. In that paper, applicant has stated [4], and this statement indicates that the invention is different from what is defined in the claim(s) because [5].
Examiner Note:
1. This rejection must be preceded by form paragraph 7.30.02 or 7.103.
2. This paragraph is to be used only where applicant has stated, somewhere other than in the application, as filed, that the invention is something different from what is defined in the claim(s).
3. In bracket 3, identify the submission by applicant (which is not the application, as filed, but may be in the remarks by applicant, in the brief, in an affidavit, etc.) by the date the paper was filed in the USPTO.
4. In bracket 4, set forth what applicant has stated in the submission to indicate a different invention.
5. In bracket 5, explain how the statement indicates an invention other than what is being claimed.