[Patentpractice] Question about appeal brief

Mon Mar 17 10:46:16 UTC 2025

I guess I’ve always been too scared to follow the rules that way… I mean, if one must argue each claim separately to avoid standing or falling together, seems to me that part of that is also itemizing the claimed subject matter separately as well.

After all, it’s pretty easy to do with dependent claims, especially dependent claims are substantially in their originally presented form.

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From: David Boundy <DavidBoundyEsq at gmail.com>
Sent: Monday, March 17, 2025 6:36 AM
To: Suzannah K. Sundby <suzannah at canadylortz.com>
Cc: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>; David Boundy <DavidBoundyEsq at gmail.com>
Subject: Re: [Patentpractice] Question about appeal brief

The question, at least as I interpreted it, was about the Summary.

Yes, you have to separately argue the dependent claim, and you have to state that you're separately arguing it.   But you don't have to do the "specification by page and line number, and figure references" for dependent claims, except 112(f) limitations.

On Mon, Mar 17, 2025 at 5:52 AM Suzannah K. Sundby <suzannah at canadylortz.com<mailto:suzannah at canadylortz.com>> wrote:
Wait, I thought even if a dependent claim (including non-112(f) claims) one must separately argue each claim, i.e., recite in the summary of the claimed subject matter, or else the claim stands or falls with the others (i.e., the claim it depends on)…

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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> On Behalf Of David Boundy via Patentpractice
Sent: Sunday, March 16, 2025 10:56 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: David Boundy <DavidBoundyEsq at gmail.com<mailto:DavidBoundyEsq at gmail.com>>
Subject: Re: [Patentpractice] Question about appeal brief

Only if the dependent claim has a 112(f) limitation.

On Sun, Mar 16, 2025 at 6:22 PM Patent Lawyer via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>> wrote:
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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