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608.01(n) Dependent Claims [R-2] - 600 Parts, Form, and Content of Application
608.01(n) Dependent Claims [R-2]
I. MULTIPLE DEPENDENT CLAIMS
37 CFR 1.75 Claim(s).
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(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(d). 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.
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Generally, a multiple dependent claim is a dependent claim which refers back in the alternative to more than one preceding independent or dependent claim.
The second paragraph of 35 U.S.C. 112 has been revised in view of the multiple dependent claim practice introduced by the Patent Cooperation Treaty. Thus 35 U.S.C. 112 authorizes multiple dependent claims in applications filed on and after January 24, 1978, 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 multiple dependent claim which depends from another multiple dependent claim should be objected to by using form paragraph 7.45.
¶ 7.45 Improper Multiple Dependent Claims
Claim [1] objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim [2]. See MPEP § 608.01(n). Accordingly, the claim [3] not been further treated on the merits.
Examiner Note
1. In bracket 2, insert --should refer to other claims in the alternative only--, and/or, --cannot depend from any other multiple dependent claim--.
2. Use this paragraph rather than 35 U.S.C. 112, fifth paragraph.
3. In bracket 3, insert --has-- or --s have--.
Assume each claim example given below is from a different application.
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.
D. Handling of Multiple Dependent Claims by the Office of Initial Patent Examination
The Office of Initial Patent Examination (OIPE) is responsible for verifying whether multiple dependent claims filed with the application are in proper alternative form, that they depend only upon prior independent or single dependent claims and also for calculating the amount of the filing fee. **>Form< PTO-1360 >or PTO/SB/07< has been designed to be used in conjunction with the current fee calculation form PTO-875 >or PTO/SB/06<.
E. Handling of Multiple Dependent Claims by the Technology Center Technical Support Staff
The Technology Center (TC) technical support staff is responsible for verifying compliance with the statute and rules of multiple dependent claims added by amendment and for calculating the amount of any additional fees required. This calculation should be performed on form PTO-1360 >or PTO/SB/07<.
There is no need for a TC technical support staff to check the accuracy of the initial filing fee since this has already been verified by the Office of Initial Patent Examination when granting the filing date.
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. The applicant, or his or her attorney or agent, should be contacted to pay the additional fee. Where a letter is written in an insufficient fee situation, a copy of the multiple dependent claim fee calculation, form PTO-1360 >or PTO/SB/07< should be included for applicant's information.
Where the TC technical support staff notes that the reference to the prior claims is improper in an added or amended multiple dependent claim, a notation should be made in the left margin next to the claim itself and the number 1, which is inserted in the "Dep. Claim" column of that amendment on form PTO-1360 >or PTO/SB/07< should be circled in order to call this matter to the examiner's attention.
F. Handling of Multiple Dependent Claims by the Examiner
Public Law 94-131, the implementing legislation for the Patent Cooperation Treaty amended 35 U.S.C. 112 to state that "a claim in dependent form shall contain a reference to a claim previously set forth." The requirement to refer to a previous claim had existed only in 37 CFR 1.75(c) before.
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.
However, 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, the examiner will renumber the claims into proper order at the time the application is allowed. (See Example B, below.)
Any unusual problems should be brought to the supervisor's attention.
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:
(A) 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.
(B) 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.
(C) 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 |
Identifi- cation 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.
The provisions of 35 U.S.C. 132 require that each Office action make it explicitly clear what rejection, objection and/or requirement is applied to each claim embodiment.
G. Fees for Multiple Dependent Claims
1. Use of Form PTO-1360 >or PTO/SB/07<
To assist in the computation of the fees for multiple dependent claims, a separate "Multiple Dependent Claim Fee Calculation Sheet," form PTO-1360 >or PTO/SB/07< has been designed for use with the current "Patent Application Fee Determination Record," form PTO-875 >or PTO/SB/06<. Form PTO-1360 >or PTO/SB/07< will be placed in the file wrapper by the Office of Initial Patent Examination (OIPE) where multiple dependent claims are in the application as filed. >For Image File Wrapper (IFW) processing, see IFW Manual.< If multiple dependent claims are not included upon filing, but are later added by amendment, the **>TC< technical support staff will place the form in the file wrapper. If there are multiple dependent claims in the application, the total number of independent and dependent claims for fee purposes will be calculated on form PTO-1360 >or PTO/SB/07< and the total number of claims and number of independent claims is then placed on form PTO-875 >or PTO/SB/06< for final fee calculation purposes.
2. Calculation of Fees
(a) Proper Multiple Dependent Claim
35 U.S.C. 41(a), provides that 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 set forth in 37 CFR 1.16(d) 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, OIPE may indicate that fact by placing an encircled numeral "1" in the "Dep. Claims" column of form PTO-1360 >or PTO/SB/07<. 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
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.
Calculation of Fee in Fee Example
After the number of "Ind." and "Dep." claims are noted on form PTO-1360 >or PTO/SB/07<, 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 form PTO-875 >or PTO/SB/06< 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. Any claim which is in dependent form but which is so worded that it, in fact is not, as, for example, it does not include every limitation of the claim on which it depends, will be required to be canceled as not being a proper dependent claim; and cancelation of any further claim depending on such a dependent claim will be similarly required. Where a claim in dependent form is not considered to be a proper dependent claim under 37 CFR 1.75(c), the examiner should object to such claim under 37 CFR 1.75(c) and require cancellation of such improper dependent claim or rewriting of such improper dependent claim in independent form. See Ex parte Porter, 25 USPQ2d 1144, 1147 (Bd. of Pat. App. & Inter. 1992) (A claim determined to be an improper dependent claim should be treated as a formal matter, in that the claim should be objected to and applicant should be required to cancel the claim (or replace the improper dependent claim with an independent claim) rather than treated by a rejection of the claim under 35 U.S.C. 112, fourth paragraph.). The applicant may thereupon amend the claims to place them in proper dependent form, or may redraft them as independent claims, upon payment of any necessary additional fee.
Note, that although 37 CFR 1.75(c) requires the dependent claim to further limit a preceding claim, this rule does not apply to product-by-process claims.
Claims which are in improper dependent form for failing to further limit the subject matter of a previous claim should be objected to under 37 CFR 1.75(c) by using form paragraph 7.36.
¶ 7.36 Objection, 37 CFR 1.75(c), Improper Dependent Claim
Claim [1] objected to under 37 CFR 1.75(c), as being of improper dependent form for failing to further limit the subject matter of a previous claim. Applicant is required to cancel the claim(s), or amend the claim(s) to place the claim(s) in proper dependent form, or rewrite the claim(s) in independent form. [2].
Examiner Note
1. In bracket 2, insert an explanation of what is in the claim and why it does not constitute a further limitation.
2. Note Ex parte Porter, 25 USPQ2d 1144 (Bd. Pat. App. & Inter. 1992) for situations where a method claim is considered to be properly dependent upon a parent apparatus claim and should not be objected to or rejected under 35 U.S.C. 112, fourth paragraph. See also MPEP § 608.01(n), "Infringement Test" for dependent claims. The test for a proper dependent claim is whether the dependent claim includes every limitation of the parent claim. The test is not whether the claims differ in scope. A proper dependent claim shall not conceivably be infringed by anything which would not also infringe the basic claim.
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, fourth paragraph) or in other words that it shall not conceivably be infringed by anything which would not also infringe the basic claim.
A dependent claim does not lack compliance with 35 U.S.C. 112, fourth paragraph, simply because there is a question as to (1) the significance of the further limitation added by the dependent claim, or (2) whether the further limitation in fact changes the scope of the dependent claim from that of the claim from which it depends. The test for a proper dependent claim under the fourth paragraph of 35 U.S.C. 112 is whether the dependent claim includes every limitation of the claim from which it depends. The test is not one of whether the claims differ in scope.
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.
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, although it might result in a requirement for restriction.
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<.
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 are the only restrictions with respect to the sequence of claims and, in general, applicant's sequence should not be changed. See MPEP § 608.01(j). Applicant may be so advised by using form paragraph 6.18.
¶ 6.18 Series of Singular Dependent Claims
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 by any claim which does not also depend from said dependent claim. It should be kept in mind that a dependent claim may refer to any preceding independent claim. In general, applicant's sequence will not be changed. See MPEP § 608.01(n).
During prosecution, the order of claims may change and be in conflict with the requirement that dependent claims refer to a preceding claim. Accordingly, the numbering of dependent claims and the numbers of preceding claims referred to in dependent claims should be carefully checked when claims are renumbered upon allowance.
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.
Form paragraph 7.43 can be used to state the objection.
¶ 7.43 Objection to Claims, Allowable Subject Matter
Claim [1] objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.