[Patentpractice] Question about appeal brief

David Boundy DavidBoundyEsq at gmail.com
Mon Mar 17 11:15:37 UTC 2025 

OK....    As you've divided into (1) and (2), (1) and (2) are connected in
the conjunctive (like limitations of a claim -- all must be satisfied in
the conjunctive), not disjunctive.   The words " structure, material, or
acts ... corresponding to each claimed function " are pretty clearly
directed to 112(f), no?

On Mon, Mar 17, 2025 at 7:08 AM Suzannah K. Sundby <suzannah at canadylortz.com>
wrote:

> I dunno… I read 37 CFR 41.37(c)(1)(iii) differently (annotated below), and
> thus think it’s best to err on the side of caution.
>
>  *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
> *.*
>
> (1) 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,
>
> (2) 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.
>
>
>
> Suzannah K. Sundby <http://www.linkedin.com/in/ssundby/> *|* Partner
>
> *canady + lortz** LLP* <http://www.canadylortz.com/>
>
> 1050 30th Street, NW
>
> Washington, DC 20007
>
> T: 202.486.8020
>
> F: 202.540.8020
>
> suzannah at canadylortz.com
>
> www.canadylortz.com
>
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>
> *From:* David Boundy <DavidBoundyEsq at gmail.com>
> *Sent:* Monday, March 17, 2025 6:52 AM
> *To:* Suzannah K. Sundby <suzannah at canadylortz.com>
> *Cc:* David Boundy <DavidBoundyEsq at gmail.com>; For patent practitioners.
> This is not for laypersons to seek legal advice. <
> patentpractice at oppedahl-lists.com>
> *Subject:* Re: [Patentpractice] Question about appeal brief
>
>
>
> Almost certainly, at the beginning of the section on the dependent claim,
> you lay out the relevant (and helpful) facts, as you would in any brief to
> any tribunal.  But you do it at the place and in the way it does the most
> good -- the section addressing the dependent claim.
>
>
>
> The question was "must I summarize that dependent claim in the “SUMMARY
> OF CLAIMED SUBJECT MATTER”? "   The text of the reg says "no," not in the
> Summary of Claimed Subject Matter.
>
>
>
> On Mon, Mar 17, 2025 at 6:46 AM Suzannah K. Sundby <
> suzannah at canadylortz.com> wrote:
>
> 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.
>
>
>
> Suzannah K. Sundby <http://www.linkedin.com/in/ssundby/> *|* Partner
>
> canady + lortz LLP <http://www.canadylortz.com/>
>
> 1050 30th Street, NW
>
> Washington, DC 20007
>
> T: 202.486.8020
>
> F: 202.540.8020
>
> suzannah at canadylortz.com
>
> www.canadylortz.com
>
> Confidentiality Notice:  This message is being sent by or on behalf of a
> lawyer.  It is intended exclusively for the individual or entity to which
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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> 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)…
>
>
>
> Suzannah K. Sundby <http://www.linkedin.com/in/ssundby/> *|* Partner
>
> canady + lortz LLP <http://www.canadylortz.com/>
>
> 1050 30th Street, NW
>
> Washington, DC 20007
>
> T: 202.486.8020
>
> F: 202.540.8020
>
> suzannah at canadylortz.com
>
> www.canadylortz.com
>
> Confidentiality Notice:  This message is being sent by or on behalf of a
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>
> *From:* Patentpractice <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>
> *Cc:* David Boundy <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> 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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