[Patentpractice] Question about appeal brief
Patent Lawyer
patentlawyer995 at gmail.com
Sun Mar 16 22:20:16 UTC 2025
In an appeal brief: if I separately argue a dependent claim, must I summarize that dependent claim in the “SUMMARY OF CLAIMED SUBJECT MATTER”?
Or does 37 CFR 41.37(c)(1)(iii <https://www.ecfr.gov/current/title-37/part-41/section-41.37#p-41.37(c)(1)(iii)>) [reproduced below] only require summary of the dependent claims that use MPF or Step-plus-function language?
Summary of claimed subject matter. A concise explanation of the subject matter defined in each of the rejected independent claims, which shall refer to the specification in the Record by page and line number or by paragraph number, and to the drawing, if any, by reference characters. For each rejected independent claim, and for each dependent claim argued separately under the provisions of paragraph (c)(1)(iv) <https://www.ecfr.gov/current/title-37/section-41.37#p-41.37(c)(1)(iv)> of this section, if the claim contains a means plus function or step plus function recitation as permitted by 35 U.S.C. 112(f) <https://www.govinfo.gov/link/uscode/35/112>, then the concise explanation must identify the structure, material, or acts described in the specification in the Record as corresponding to each claimed function with reference to the specification in the Record by page and line number or by paragraph number, and to the drawing, if any, by reference characters.
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