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   Author  Topic: multiple dependent claim help please  (Read 1543 times)
Henry Giano
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multiple dependent claim help please
« on: Mar 20th, 2007, 6:29pm »
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I was wondering if anyone can help me on the topic of multiple dependent claims.
Im reviewing the questions on the Oct 03 exam and was wondering why these claims are not in proper dependent form.
 
claim 5: a gadget according to claim claims 1-3, in which..
claim 5: a gadget as in claims 1,2,3 and/or 4, in which...
claim 5: a gadget as in claims 1 or 2, made by the process of claim 3 or 4, in which ...
claim 5: a gadget as in either claim 6 or claim 8, in which...
 
What are all these improper dependent forms?
Can someone list some proper dependent claims?
And what does it mean by referring to the alternative?
 
Thanks
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plex
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Posts: 168
Re: multiple dependent claim help please
« Reply #1 on: Mar 20th, 2007, 6:32pm »
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First one for sure
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mk1023
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Posts: 52
Re: multiple dependent claim help please
« Reply #2 on: Mar 20th, 2007, 6:36pm »
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MPEP 608.01 (n)
 
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.
 
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stillstudying
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Re: multiple dependent claim help please
« Reply #3 on: Mar 20th, 2007, 7:18pm »
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on Mar 20th, 2007, 6:29pm, Henry Giano wrote:
I was wondering if anyone can help me on the topic of multiple dependent claims.
Im reviewing the questions on the Oct 03 exam and was wondering why these claims are not in proper dependent form.
 
claim 5: a gadget according to claim claims 1-3, in which..

I think this one isn't clear as to whether it is "all of 1-3" or "any one of 1-3".
Quote:

claim 5: a gadget as in claims 1,2,3 and/or 4, in which...

"and" is a bad thing.
Quote:

claim 5: a gadget as in claims 1 or 2, made by the process of claim 3 or 4, in which ...

Doubly multiply dependent.  You can't do that.
Quote:

claim 5: a gadget as in either claim 6 or claim 8, in which...

 
I think this one is ok.  I hope so, anyway, otherwise I've got to go back and reread that section.
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stillstudying
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Re: multiple dependent claim help please
« Reply #4 on: Mar 20th, 2007, 7:23pm »
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Quote:
I think this one is ok.  I hope so, anyway, otherwise I've got to go back and reread that section.

Oh, oops.  The last one might not be ok because it's claim 5, and it's referring to "6 or 8".  They have to be reordered so that it is referring backwards.  If it were claim 9, then it wouldn't be a problem.
 
I definitely need to review 600. . . .  Sigh.
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