This chapter is tested very heavily. There are always a few questions on the contents of provisional and nonprovisional applications in addition to topics relating to the oath/declaration. Claims are one of the most commonly tested areas of the bar exam. Several years ago, the PTO had a p.m. essay section which focused entirely on claims. As you can probably imagine, the PTO still incorporates many questions related to claims. Some of the claim questions will refer to the wording required to make a proper claim while other questions will be more general. The most difficult questions relate to the logic of a set of claims. Fortunately, there are usually only one of these per every 50 questions. A few additional questions will relate to information disclosure statements (IDS's) and the complex rules associated with their submittal to the PTO.

Claims

Rules concerning claims:
1. they should be placed at the end of the specification
2. if more than 1, they need to be separated by a line of indentation
3. they should be arranged in order of scope so that the first claim is the least restrictive (broadest)
4. claims of like species should be grouped together
5. process and product claims need to be separately grouped
6. any measurements should be in the metric system, followed by English units
7. they may contain tables if tables are necessary to conform to specification guidelines

Grammatical rules:
1. claims should begin with "I (or we) claim" or "The invention claimed is" a claim is divided by a colon (:) which generally describes the things or steps
2. either a semicolon or comma separates each paragraph
3. the last step should have an "and" after the semicolon (; and)
4. each claim should begin with a capital and end with a period (only the first word in a claim is capitalized

Dependent claims:
A series of singular dependent claims is allowed where a dependent claim refers to a preceding claim, which in turn, refers to another preceding claim

Rules governing dependent claims:
1. a dependent claim must further limit the subject matter of a previous claim
2. there is not a minimum or maximum number of dependent claims
3. a dependent claim may refer back to any preceding claim; there may be a string of these
4. a claim depending from a dependent claim should not be separated from any claim which does not also depend (directly or indirectly), from the dependent claim
a. for example " 2. The product of claim 1 in which..."

Since independent claims are the broadest claims of an application and dependent claims depend on independent claims, the broadening of a dependent claim cannot broaden the scope of the invention

A lesser burden of proof may be required to make out a case of prima facie obviousness for product-by-process claims, than is required to make out a prima facie case of obviousness when the product is claimed in the conventional fashion

Multiple dependent claims:
A series of dependent claims that refer back in the alternative form to more than one proceeding independent or dependent claim

Rules governing multiple dependent claims:
1. they may only refer to one set of claims
2. they cannot depend on another multiple dependent claim
3. they cannot depend on more than one previous claim
4. they may not serve as a basis for any other multiple dependent claim, either directly or indirectly
5. they will not contain all the limitations of all the alternate claims to which they refer
6. the limitations or elements of each claim that is incorporated by reference with a multiple dependent claim must be considered separately
7. they must be considered in the same manner as a plurality of single dependent claims
8. restriction may be required between the embodiments of a multiple dependent claim
9. a multiple dependent claim can contain in any one embodiment only those limitations of the particular claim referred to for the embodiment under consideration

Determining fees for multiple dependent claims:

Count up all dependent claims:
1. if it says; Claim 2 dependent from 1 = for a total of 2
2. if it says; Claim 3 dependent from 1 or 2, that is 2 = for a total of 3

Markush claims:
1. an acceptable form of alternative expression
2. Markush claims always contain the phrase; "consisting of' and the conjunctive "and"
3. they never contain "or"
a. example: R is selected from the group consisting of A, B, C and D
4. two common phrases include "chosen from the group consisting of' and "chosen from the group consisting essentially of'

Essential material:

Material is considered necessary if it:
1. is necessary to describe the claimed invention
2. provides the enabling disclosure of the claimed invention
3. describes the best mode

Essential material may be incorporated by reference if it is from:
1. a U.S. patent
2. a pending U.S. application
3. an abandoned application less than 20 years old can be incorporated by reference to the same extent as a copending application

Material not allowed to be incorporated by reference in a U.S. utility patent application includes:
1. essential material from a foreign patent or application
2. matter from a magazine article
3. a U.S. article that incorporates the material from another patent by reference

Nonessential material is the background material; it may be incorporated by reference from:
1. patents or applications published in the U.S.
2. from publications or foreign patents
3. from a prior filed, commonly owned U.S. application

New matter:
1. matter not in the original specification, claims, or drawings is usually considered new matter
2. where new matter is confined to amendments in the specification a review of the examiner's request for cancellation is by way of petition
3. where the alleged new matter is introduced or affects the claims, thus necessitating their
4. rejection on this ground, the question becomes an appealable one

Specification:

A specification may contain:
1. tables and chemical formulas instead of formal drawings
2. one or more claims at its conclusion

A specification may not contain:
1. graphs, diagrams or flowcharts
2. links or outside sites
3. reservations for future applications of the subject matter can be disclosed but not claimed in the pending application
4. color drawings and photographs are not normally permitted, however, they may be allowed in utility and design applications after the granting of a petition and fee
5. an applicant needs to submit the petition at any time during the prosecution when adding in color drawings and photographs
a. this petition must be submitted for a continuation even if it was already OK'd in the original application

Information Disclosure Statements

Time allowed for filing an IDS:
1. within 3 months of filing or before the first Office action on the merits, whichever is first
2. after time stated in (1), but before final action or Notice of Allowance
3. after final action or Notice of Allowance, but before the payment of the issue fee

Requirements for filing an IDS based on the time categories from above:
1. under (1) above - none, it is always considered
2. under (2) above - 37 C.F.R. 1.97(e) statement or 37 C.F.R. 1.17(p) fee
3. under (3) above - 37 C.F.R. 1.97(e) statement, petition and fee

If filing after the payment of the issue fee:
The IDS will not be considered, it is just placed in application file

The options at this point are:
1. to withdraw the application from issue so the information may be considered in a continuing application under 37 C.F.R. 1.53(b) - in this case, the entire IDS will need to be resubmitted
2. to withdraw application from issue so a CPA under 37 C.F.R. 1.53(D) may be filed even though the issue fee was already paid - in this case, the entire IDS will not need to be resubmitted

An IDS must be filed in a reissue within two month of its filing date