608.01(i) Claims
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(a) The specification must conclude with a claim particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention or discovery.
(b) More than one claim may be presented provided they differ substantially from each other and are not unduly multiplied.
(c) One or more claims may be presented in dependent form, referring back to and further limiting another claim or claims in the same application. Any dependent claim which refers to more than one other claim (“multiple dependent claim”) shall refer to such other claims in the alternative only. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. For fee calculation purposes under § 1.16, a multiple dependent claim will be considered to be that number of claims to which direct reference is made therein. For fee calculation purposes also, any claim depending from a multiple dependent claim will be considered to be that number of claims to which direct reference is made in that multiple dependent claim. In addition to the other filing fees, any original application which is filed with, or is amended to include, multiple dependent claims must have paid therein the fee set forth in § 1.16(j). Claims in dependent form shall be construed to include all the limitations of the claim incorporated by reference into the dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of each of the particular claims in relation to which it is being considered.
(d)
(1) The claim or claims must conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description (See § 1.58(a).)
(2) See §§ 1.141 to 1.146 as to claiming different inventions in one application.
(e) Where the nature of the case admits, as in the case of an improvement, any independent claim should contain in the following order:
(1) A preamble comprising a general description of all the elements or steps of the claimed combination which are conventional or known,
(2) A phrase such as “wherein the improvement comprises,” and
(3) Those elements, steps, and/or relationships which constitute that portion of the claimed combination which the applicant considers as the new or improved portion.
(f) If there are several claims, they shall be numbered consecutively in Arabic numerals.
(g) The least restrictive claim should be presented as claim number 1, and all dependent claims should be grouped together with the claim or claims to which they refer to the extent practicable.
(h) The claim or claims must commence on a separate physical sheet or electronic page. Any sheet including a claim or portion of a claim may not contain any other parts of the application or other material.
(i) Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation.
608.01(j) Numbering of Claims
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The original numbering of the claims must be preserved throughout the prosecution. When claims are canceled the remaining claims must not be renumbered. When claims are added, they must be numbered by the applicant consecutively beginning with the number next following the highest numbered claim previously presented (whether entered or not). When the application is ready for allowance, the examiner, if necessary, will renumber the claims consecutively in the order in which they appear or in such order as may have been requested by applicant.
In a single claim case, the claim is not numbered.
608.01(k) Statutory Requirement of Claims
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The applicant shall particularly point out and distinctly claim the subject matter which he or she regards as his or her invention.
- The portion of the application in which he or she does this forms the claim or claims.
608.01(l) Claims Present on the Application Filing Date
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608.01(m) Form of Claims
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While there is no set statutory form for claims, the present Office practice is to insist that each claim must be the object of a sentence starting with “I (or we) claim,” “The invention claimed is” (or the equivalent).
Each claim begins with a capital letter and ends with a period.
- Periods may not be used elsewhere in the claims except for abbreviations.
- Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation.
There may be plural indentations to further segregate subcombinations or related steps.
- In general, the printed patent copies will follow the format used but printing difficulties or expense may prevent the duplication of unduly complex claim formats.
Reference characters corresponding to elements recited in the detailed description and the drawings may be used in conjunction with the recitation of the same element or group of elements in the claims.
- The reference characters, however, should be enclosed within parentheses so as to avoid confusion with other numbers or characters which may appear in the claims.
- The use of reference characters is to be considered as having no effect on the scope of the claims.
Many of the difficulties encountered in the prosecution of patent applications after final rejection may be alleviated if each applicant includes, at the time of filing or no later than the first reply, claims varying from the broadest to which he or she believes he or she is entitled to the most detailed that he or she is willing to accept.
Claims should preferably be arranged in order of scope so that the first claim presented is the least restrictive.
- All dependent claims should be grouped together with the claim or claims to which they refer to the extent practicable.
- Where separate species are claimed, the claims of like species should be grouped together where possible.
- Similarly, product and process claims should be separately grouped. Such arrangements are for the purpose of facilitating classification and examination.
The form of claim required in 37 CFR 1.75(e) is particularly adapted for the description of improvement-type inventions. It is to be considered a combination claim.
- The preamble of this form of claim is considered to positively and clearly include all the elements or steps recited therein as a part of the claimed combination.
608.01(n) Dependent Claims
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I. MULTIPLE DEPENDENT CLAIMS
Generally, a multiple dependent claim is a dependent claim which refers back in the alternative to more than one preceding independent or dependent claim.
35 U.S.C. 112(e) and pre-AIA 35 U.S.C. 112, fifth paragraph, authorize multiple dependent claims in applications as long as they are in the alternative form (e.g., “A machine according to claims 3 or 4, further comprising ---”). Cumulative claiming (e.g., “A machine according to claims 3 and 4, further comprising ---”) is not permitted.
- A multiple dependent claim may refer in the alternative to only one set of claims.
- A claim such as “A device as in claims 1, 2, 3, or 4, made by a process of claims 5, 6, 7, or 8” is improper.
- 35 U.S.C. 112 allows reference to only a particular claim.
- Furthermore, a multiple dependent claim may not serve as a basis for any other multiple dependent claim, either directly or indirectly.
These limitations help to avoid undue confusion in determining how many prior claims are actually referred to in a multiple dependent claim.
A. Acceptable Multiple Dependent Claim Wording
Claim 5. A gadget according to claims 3 or 4, further comprising ---
Claim 5. A gadget as in any one of the preceding claims, in which ---
Claim 5. A gadget as in any one of claims 1, 2, and 3, in which ---
Claim 3. A gadget as in either claim 1 or claim 2, further comprising ---
Claim 4. A gadget as in claim 2 or 3, further comprising ---
Claim 16. A gadget as in claims 1, 7, 12, or 15, further comprising ---
Claim 5. A gadget as in any of the preceding claims, in which ---
Claim 8. A gadget as in one of claims 4-7, in which ---
Claim 5. A gadget as in any preceding claim, in which ---
Claim 10. A gadget as in any of claims 1-3 or 7-9, in which ---
Claim 11. A gadget as in any one of claims 1, 2, or 7-10 inclusive, in which ---
B. Unacceptable Multiple Dependent Claim Wording
1. Claim Does Not Refer Back in the Alternative Only
Claim 5. A gadget according to claim 3 and 4, further comprising ---
Claim 9. A gadget according to claims 1-3, in which ---
Claim 9. A gadget as in claims 1 or 2 and 7 or 8, which ---
Claim 6. A gadget as in the preceding claims in which ---
Claim 6. A gadget as in claims 1, 2, 3, 4 and/or 5, in which ---
Claim 10. A gadget as in claims 1-3 or 7-9, in which ---
2. Claim Does Not Refer to a Preceding Claim
Claim 3. A gadget as in any of the following claims, in which ---
Claim 5. A gadget as in either claim 6 or claim 8, in which ---
3. Reference to Two Sets of Claims to Different Features
Claim 9. A gadget as in claim 1 or 4 made by the process of claims 5, 6, 7, or 8, in which ---
4. Reference Back to Another Multiple Dependent Claim
Claim 8. A gadget as in claim 5 (claim 5 is a multiple dependent claim) or claim 7, in which ---
35 U.S.C. 112 indicates that the limitations or elements of each claim incorporated by reference into a multiple dependent claim must be considered separately.
- Thus, a multiple dependent claim, as such, does not contain all the limitations of all the alternative claims to which it refers, but rather contains in any one embodiment only those limitations of the particular claim referred to for the embodiment under consideration.
- Hence, a multiple dependent claim must be considered in the same manner as a plurality of single dependent claims.
C. Restriction Practice
For restriction purposes, each embodiment of a multiple dependent claim is considered in the same manner as a single dependent claim.
- Therefore, restriction may be required between the embodiments of a multiple dependent claim.
- Also, some embodiments of a multiple dependent claim may be held withdrawn while other embodiments are considered on their merits.
E. Handling of Multiple Dependent Claims by the Technology Center Technical Support Staff
If a multiple dependent claim (or claims) is added in an amendment without the proper fee, either by adding references to prior claims or by adding a new multiple dependent claim, the amendment should not be entered until the fee has been received.
- In view of the requirements for multiple dependent claims, no amendment containing new claims or changing the dependency of claims should be entered before checking whether the paid fees cover the costs of the amended claims.
F. Handling of Multiple Dependent Claims by the Examiner
A claim in dependent form must refer only to a claim or claims previously set forth.
The following procedures are to be followed by examiners when faced with claims which refer to numerically succeeding claims:
- If any series of dependent claims contains a claim with an improper reference to a numerically following claim which cannot be understood, the claim referring to a following claim should normally be objected to and not treated on the merits.
- In situations where a claim refers to a numerically following claim and the dependency is clear, both as presented and as it will be renumbered at issue, all claims should be examined on the merits and no objection as to form need be made.
- In such cases, an examiner’s amendment should be prepared if the order of the claims is changed.
Example A
(Claims 4 and 6 should be objected to as not being understood and should not be treated on the merits.)
1. Independent
2. Dependent on claim 5
3. Dependent on claim 2
4. “. . . as in any preceding claim”
5. Independent
6. Dependent on claim 4
Example B
Note: Parenthetical numerals represent the claim numbering for issue should all claims be allowed.
(All claims should be examined.)
1. (1) Independent
2. (5) Dependent on claim 5 (4)
3. (2) Dependent on claim 1 (1)
4. (3) Dependent on claim 3 (2)
5. (4) Dependent on either claim 1 (1) or claim 3 (2)
The following practice is followed by patent examiners when making reference to a dependent claim either singular or multiple:
- When identifying a singular dependent claim which does not include a reference to a multiple dependent claim, either directly or indirectly, reference should be made only to the number of the dependent claim.
- When identifying the embodiments included within a multiple dependent claim, or a singular dependent claim which includes a reference to a multiple dependent claim, either directly or indirectly, each embodiment should be identified by using the number of the claims involved, starting with the highest, to the extent necessary to specifically identify each embodiment.
- When all embodiments included within a multiple dependent claim or a singular dependent claim which includes a reference to a multiple dependent claim, either directly or indirectly, are subject to a common rejection, objection, or requirement, reference may be made only to the number of the dependent claim.
The following table illustrates the current practice where each embodiment of each claim must be treated on an individual basis:
Claim No. |
Claim dependency |
Identification All claims |
Approved practice |
1 |
Independent |
1 |
1 |
2 |
Depends from 1 |
2/1 |
2 |
3 |
Depends from 2 |
3/2/1 |
3 |
4 |
Depends from 2 or 3 |
4/2/1 4/3/2/1 |
4/2 4/3 |
5 |
Depends from 3 |
5/3/2/1 |
5 |
6 |
Depends from 2, 3, or 5 |
6/2/1 6/3/2/1 6/5/3/2/1 |
6/2 6/3 6/5 |
7 |
Depends from 6 |
7/6/2/1 7/6/3/2/1 7/6/5/3/2/1 |
7/6/2 7/6/3 7/6/5 |
When all embodiments in a multiple dependent claim situation (claims 4, 6, and 7 above) are subject to a common rejection, objection, or requirements, reference may be made to the number of the individual dependent claim only.
- For example, if 4/2 and 4/3 were subject to a common ground of rejection, reference should be made only to claim 4 in the statement of that rejection.
G. Fees for Multiple Dependent Claims
2. Calculation of Fees
(a) Proper Multiple Dependent Claim
Claims in proper multiple dependent form may not be considered as single dependent claims for the purpose of calculating fees.
- Thus, a multiple dependent claim is considered to be that number of dependent claims to which it refers.
- Any proper claim depending directly or indirectly from a multiple dependent claim is also considered as the number of dependent claims as referred to in the multiple dependent claim from which it depends.
(b) Improper Multiple Dependent Claim
If none of the multiple dependent claims is proper, the multiple dependent claim fee will not be required.
- However, the multiple dependent claim fee is required if at least one multiple dependent claim is proper.
If any multiple dependent claim is improper, OPAP may indicate that fact by placing an encircled numeral “1” in the “Dep. Claims” column.
- The fee for any improper multiple dependent claim, whether it is defective for either not being in the alternative form or for being directly or indirectly dependent on a prior multiple dependent claim, will only be one, since only an objection to the form of such a claim will normally be made.
- This procedure also greatly simplifies the calculation of fees.
- Any claim depending from an improper multiple dependent claim will also be considered to be improper and be counted as one dependent claim.
(c) Fee calculation example
i) Comments On Fee Calculation Example
Claim 1 — This is an independent claim; therefore, a numeral “1” is placed opposite claim number 1 in the “Ind.” column.
Claim 2 — Since this is a claim dependent on a single independent claim, a numeral “1” is placed opposite claim number 2 of the “Dep.” column.
Claim 3 — Claim 3 is also a single dependent claim, so a numeral “1” is placed in the “Dep.” column.
Claim 4 — Claim 4 is a proper multiple dependent claim. It refers directly to two claims in the alternative, namely, claim 2 or 3. Therefore, a numeral “2” to indicate direct reference to two claims is placed in the “Dep.” column opposite claim number 4.
Claim 5 — This claim is a singularly dependent claim depending from a multiple dependent claim. For fee calculation purposes, such a claim is counted as being that number of claims to which direct reference is made in the multiple dependent claim from which it depends. In this case, the multiple dependent claim number 4 it depends from counts as 2 claims; therefore, claim 5 also counts as 2 claims. Accordingly, a numeral “2” is placed opposite claim number 5 in the “Dep.” column.
Claim 6 — Claim 6 depends indirectly from a multiple dependent claim 4. Since claim 4 counts as 2 claims, claim 6 also counts as 2 dependent claims. Consequently, a numeral “2” is placed in the “Dep.” column after claim 6.
Claim 7 — This claim is a multiple dependent claim since it refers to claims 4, 5, or 6. However, as can be seen by looking at the “2” in the “Dep.” column opposite claim 4, claim 7 depends from a multiple dependent claim. This practice is improper under 35 U.S.C.112 and 37 CFR 1.75(c). Following the procedure for calculating fees for improper multiple dependent claims, a numeral “1” is placed in the “Dep.” column with a circle drawn around it to alert the examiner that the claim is improper.
Claim 8 — Claim 8 is improper since it depends from an improper claim. If the base claim is in error, this error cannot be corrected by adding additional claims depending therefrom. Therefore, a numeral “1” with a circle around it is placed in the “Dep.” column.
Claim 9 — Here again we have an independent claim which is always indicated with a numeral “1” in the “Ind.” column opposite the claim number.
Claim 10 — This claim refers to two independent claims in the alternative. A numeral “2” is, therefore, placed in the “Dep.” column opposite claim 10.
Claim 11 — Claim 11 is a dependent claim which refers to two claims in the conjunctive (“1” and “9”) rather than in the alternative (“1” or “9”). This form is improper under 35 U.S.C. 112 and 37 CFR 1.75(c). Accordingly, since claim 11 is improper, an encircled number “1” is placed in the “Dep.” column opposite Claim 11.
ii) Calculation of Fee in Fee Example
After the number of “Ind.” and “Dep.” claims are noted, each column is added. In this example, there are 2 independent claims and 13 dependent claims or a total of 15 claims. The number of independent and total claims can then be placed on the form and the fee calculated.
II. TREATMENT OF IMPROPER DEPENDENT CLAIMS
The initial determination, for fee purposes, as to whether a claim is dependent must be made by persons other than examiners; it is necessary, at that time, to accept as dependent virtually every claim which refers to another claim, without determining whether there is actually a true dependent relationship.
- The initial acceptance of a claim as a dependent claim does not, however, preclude a subsequent holding by the examiner that a claim is not a proper dependent claim.
The fact that a dependent claim which is otherwise proper might relate to a separate invention which would require a separate search or be separately classified from the claim on which it depends would not render it an improper dependent claim.
The fact that the independent and dependent claims are in different statutory classes does not, in itself, render the latter improper.
Thus, if claim 1 recites a specific product, a claim for the method of making the product of claim 1 in a particular manner would be a proper dependent claim since it could not be infringed without infringing claim 1. Similarly, if claim 1 recites a method of making a product, a claim for a product made by the method of claim 1 could be a proper dependent claim. On the other hand, if claim 1 recites a method of making a specified product, a claim to the product set forth in claim 1 would not be a proper dependent claim since it is conceivable that the product claim can be infringed without infringing the base method claim if the product can be made by a method other than that recited in the base method claim.
When examining a dependent claim, the examiner should determine whether the claim complies with 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, fourth paragraph, which requires that dependent claims contain a reference to a previous claim in the same application, specify a further limitation of the subject matter claimed, and include all the limitations of the previous claim.
If the dependent claim does not comply with the requirements of 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, fourth paragraph, the examiner should reject the dependent claim under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, fourth paragraph as unpatentable rather than objecting to the claim.
- A dependent claim must be rejected under 35 U.S.C. 112, fourth paragraph if it omits an element from the claim upon which it depends or it fails to add a limitation to the claim upon which it depends.
Claims which are in improper dependent form for failing to further limit the subject matter of a previous claim, or for not including every limitation of the claim from which it depends, should be rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, fourth paragraph.
III. INFRINGEMENT TEST
The test as to whether a claim is a proper dependent claim is that it shall include every limitation of the claim from which it depends 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, fourth paragraph) or in other words that it shall not conceivably be infringed by anything which would not also infringe the basic claim.
- Another requirement is that the dependent claim must specify a further limitation(s) of the subject matter claimed.
A dependent claim does not lack compliance with 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, fourth paragraph, simply because there is a question as to the significance of the further limitation added by the dependent claim.
Thus, for example, if claim 1 recites the combination of elements A, B, C, and D, a claim reciting the structure of claim 1 in which D was omitted or replaced by E would not be a proper dependent claim, even though it placed further limitations on the remaining elements or added still other elements.
Examiners are reminded that a dependent claim is directed to a combination including everything recited in the base claim and what is recited in the dependent claim. It is this combination that must be compared with the prior art, exactly as if it were presented as one independent claim.
IV. CLAIM FORM AND ARRANGEMENT
A singular dependent claim 2 could read as follows:
2. The product of claim 1 in which . . . .
A series of singular dependent claims is permissible in which a dependent claim refers to a preceding claim which, in turn, refers to another preceding claim.
A claim which depends from a dependent claim should not be separated therefrom by any claim which does not also depend from said “dependent claim.”
- It should be kept in mind that a dependent claim may refer back to any preceding independent claim.
- These are the only restrictions with respect to the sequence of claims and, in general, applicant’s sequence should not be changed.
V. REJECTION AND OBJECTION
If the base claim has been canceled, a claim which is directly or indirectly dependent thereon should be rejected as incomplete.
- If the base claim is rejected, the dependent claim should be objected to rather than rejected, if it is otherwise allowable.
608.01(o) Basis for Claim Terminology in Description
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A term used in the claims may be given a special meaning in the description.
New claims, including claims first presented after the application filing date where no claims were submitted on filing, and amendments to the claims already in the application should be scrutinized not only for new matter but also for new terminology.
- The use of a confusing variety of terms for the same thing should not be permitted.
While an applicant is not limited to the nomenclature used in the application as filed, he or she should make appropriate amendment of the specification whenever this nomenclature is departed from by amendment of the claims so as to have clear support or antecedent basis in the specification for the new terms appearing in the claims.
