[Patentpractice] Question about appeal brief

Mon Mar 17 11:46:48 UTC 2025

Hi All,

When I’m working on ex parte appeal briefs, I don’t bother summarizing
every dependent claim.  After looking at the options, I lean toward David
Boundy's interpretation.  He argues—after a careful review of the
regulatory text—that you only need a formal “Summary of Claimed Subject
Matter” for a dependent claim if it includes a 112(f) limitation.  This
method avoids unnecessary repetition while still meeting the regulatory
requirements.  Sure, being extra cautious might seem like a good idea, but
overdoing it can also make things cluttered and confusing. David’s approach
keeps the focus on the independent claims and only adds extra detail when
it’s truly needed.

On Mon, Mar 17, 2025 at 7:27 AM Suzannah K. Sundby via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> Was just writing my other post when yours sent… reiterated here with a
> slight modification (wrt your function point):
>
> *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
>
> (2) , *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,*
>
> (3) 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.
>
> * commas off-set the dependent claim requirement.
>
>
>
> Wrt “each claimed function”, I see that as meaning if a claim limitation
> has *a* function, not necessarily a means+function… otherwise, why
> include a sentence about the requirement for independent claims again?
>
>
>
> 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 7:16 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
>
>
>
> 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
>
> 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 6:52 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
> it is addressed.  This communication may contain information that is
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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
> lawyer.  It is intended exclusively for the individual or entity to which
> it is addressed.  This communication may contain information that is
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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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