Multiple Dependent Claims
608.01(n) Dependent Claims [R-07.2015]
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), authorizes 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 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(e) or 35 U.S.C. 112 (pre-AIA), 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.
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, an examiner’s amendment should be prepared if the order of the claims is changed. (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:
Table showing examples of chain of dependency
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.