# Presentation: 662986

## Claims Proposed Rulemaking

**Main Purposes**
**Applicant Assistance to Improve Focus of Examination**
**Narrow scope of initial examination so the examiner is addressing discrete number of issues**
** ****Improve the quality of first Office actions**
**Addressing Disproportionate Burdens on Examination System Posed by Applications with Large Numbers of Claims**

**39**

## Central Provisions: Representative Claims

**Normal Pattern: Applicant to identify 10 representative claims for initial examination**
**Must include **_**all**_** independent claims**
**If independent claims fewer than 10, designate additional dependent claims until total of 10 reached**
**Full initial examination of all designated representative claims**
**No first action final**

**40**

## Non-Designated Dependent Claims 

**If representative claim is allowed, all its non-designated dependent claims will be examined for compliance with 35 USC 101 and 112**
**If representative claim is rejected, applicant may, for example: **
**Traverse rejection; or**
**Amend the claim, including adding subject matter from a non-designated dependent claim; or**
**Submit substitute representative claim**

**41**

## Distribution of Independent Claims at Filing

**42**

## Beyond 10 Claims: When Initial Examination of 10 Isn’t Enough

**Circumstance should arise rarely**
**Circumstance may arise: **
**where Applicant needs more than 10 independent claims**
**if Applicant cannot prioritize dependent claims so that there are only 10 representative (all independent and designated dependent) claims**

**43**

## Beyond the 10 Claims: Assistance to Examination Document Required

**Applicant must:**
**Provide search report of all representative claims**
**Identify all limitations of representative claims that are disclosed by cited prior art references**
**Explain how all representative claims are patentable over the cited references**

**44**

## Strategic Choices: Before or During Prosecution

**Decision may be made in course of prosecution**
**Applicant may choose additional representative claims after first action. If total available representative claims exceeds 10, examination support document is req’d.**
**Rather than provide the support for examination document if there are more than 10 representative claims, applicant may:**
**Cancel designated (or independent) claims**
**Excess Claim fees paid on/after December 8, 2004 refunded**
**Remove designation of dependent claims to bring total representative claims to 10 or less**
** **

**45**

## Comments Appreciated

**Proposed Rules published in January 3, 2006, Federal Register **
**Continuations: 71 *****Fed. Reg.***** 48**
**Claims: 71 *****Fed. Reg.***** 61**
**120-day comment period**
**Comments due May 3, 2006**
**File by fax, e-mail, mail or Internet **

**46**

## Contact Information

**James Toupin**
**   ****General Counsel**
**	****e-mail:****	**_**[james.toupin@uspto.gov](mailto:james.toupin@uspto.gov)**_
**	****Phone: ****	****571 272 7000 **
**	****	**

**47**

- Changes to Practice for the Examination of
- Claims in Patent Applications
**Examples**

**61**

## Election of Claims – Example 1

**1**

**2**

**3**

**4**

**5**

**6**

**7**

**8**

**9**

**10**

**11**

**12**

**13**

**14**

**  ****=  independent claim**

** ****Red    ****=  elected claim**

**Black =  non-elected claim**

**  ****All independent claims must be elected.**
**  ****The election of claim 3 is improper.  An elected dependent claim must depend from another elected claim.  Applicant can choose to re-write claim 3 to depend from 1, or also elect claim 2 to be examined.**

**62**

## Election of Claims – Example 2

**Claims**
- An apparatus comprising....
**...**
**...**
- The method of using the apparatus of claim 1 to .....
- Claim 7 is an independent method claim and will be treated as such for the purposes of claim election.  Therefore, it must be elected to be examined.

**63**

## Election of Claims – Example 3

**Claims:**
- An apparatus comprising....
- ...
- ...
- An apparatus as claimed in one of claims 1-3 further comprising....
- For the purposes of election, proper multiply dependent claim 4 will be treated as 3 separate claims.  Thus, 3 claims will be counted to determine whether the applicant has exceeded the 10 claim limit to avoid submission of an examiner support document.

**64**

## Election of Claims – Example 4

** ****Applicant files an application with claims to a single invention.  The application is filed with 10 total claims: 3 independent claims and 7 dependent claims. **
**For examination purposes: **
**If the applicant designates all 7 dependent claims for initial examination, the Office will give initial examination to all 10 claims.**
**If the applicant does not designate any dependent claims for initial examination, the Office will give initial examination **_**only**_** to the 3 independent claims.**

**65**

## Election of claims – Example 5

**Applicant files an application with claims to a single invention.  The application is filed with 10 total claims: 3 independent claims and 7 dependent claims. The applicant designates **_**all**_** dependent claims, in addition to the independent claims, as representative claims for initial examination.**
**	****Applicant files an amendment which (a) cancels 3 claims (1 independent and 2 dependent) and (b) adds 11 claims (4 independent and 7 dependent).  The application, as amended, now contains 18 claims: 6 independent claims and 12 dependent claims.**** **
**If the applicant does not change the original designation of dependent claims,* **
**the applicant must submit an examination support document covering the 11 representative claims, or**
**reduce the number of representative claims to 10 or fewer by canceling independent claims, rescinding the designating of dependent claims for initial examination, or a combination of thereof.**
***In this instance, there are now 11 designated representative claims: 6 independent claims and 5**** ****dependent claims.**

**66**

## Election of claims – Example 6

**Applicant files an application with claims to a single invention. The application is filed with 20 total claims:**** ****3 independent claims and 17 dependent claims. **
**If applicant does not designate any dependent claims for initial examination, the Office will give initial examination **_**only**_** to the 3 independent claims.**
**If applicant designates 7 dependent claims for initial examination, the Office will give initial examination to 10 claims; 3 independent claims and 7 designated dependent claims.**

**67**

## Election of Claims – Example 7

**Applicant files an application with claims to a single invention. The application is filed with 20 total claims:**** ****3 independent claims and 17 dependent claims. **
**	****If applicant designates all 17 dependent claims for initial examination, the application will have 20 representative claims. Applicant must:**
**submit an examination support document covering the 20 representative claims, or**
**reduce the number of representative claims to 10 or fewer by canceling independent claims, rescinding the designating of dependent claims for initial examination, or a combination thereof.**

**68**

## Election of Claims – Example 8

**Example 1:**** An applicant files an application with claims to 3 distinct inventions.  The application is filed with 30 claims: 3 independent claims and 27 dependent claims. **
**	**
**If applicant does not designate any dependent claims for initial examination: **
**The Office give initial examination **_**only**_** to the 3 independent claims. **
**The Office may still restrict the**** ****application to a single**** invention**

**69**

## Election of Claims – Example 9

**An applicant files an application with claims to 3 distinct inventions.  The application is filed with 30 claims: 3 independent claims and 27 dependent claims**
**If the applicant designates 7 dependent claims for initial examination: **
**The Office will give initial examination to 10 claims: 3 independent claims and 7 designated dependent claims.**
**The Office may still restrict the application to a single invention.**

**70**

## Election of Claims – Example 10

**An applicant files an application with claims to 3 distinct inventions.  The application is filed with 30 claims: 3 independent claims and 27 dependent claims. **
**If applicant designates all 27 dependent claims for initial examination, the application will have 30 representative claims.  The applicant must:**
**submit an examination support document covering the 30 representative claims; **
**reduce the number of representative claims to 10 or fewer by canceling independent claims, rescinding the designating of dependent claims for initial examination, or a combination thereof; and/or**
**reduce the number of representative claims to 10 or fewer by suggesting a requirement for restriction and election w/out traverse of such representative claims.**

**71**