[Patentpractice] Question about appeal brief
David Boundy
DavidBoundyEsq at gmail.com
Mon Mar 17 11:59:44 UTC 2025
> why not use the Summary to make it easier for the APJs to understand the
applicant’s interpretation/scope of the claims and help them with easily
finding where support in the spec is rather than having to dig around on
their own (assuming they are inclined)
Because of good brief writing. If you're arguing a dependent claim, the
argument is going to be on page 40, after you're done with the independent
claims. If you're arguing a dependent claim, you should consolidate all
the relevant (and helpful) facts, all the relevant (and helpful) law, and
all the relevant (and helpful) application of law to facts. They should be
together so you can present a logical and consolidated flow. It's much
less helpful to put the claim interpretation/scope/support on page 4, if
the argument is at pages 40-44. If the spec is helpful in understanding
the claim, then that discussion should be with the rest of the discussion
of the issue you're presenting. If you have a 112(a) issue, then you
should marshal the evidence at the point you're using it, not 36 pages away.
The Summary is just that-- the Summary. It's not the exhaustive statement
of all relevant facts.
On Mon, Mar 17, 2025 at 7:47 AM Suzannah K. Sundby <suzannah at canadylortz.com>
wrote:
> I guess the point I’m trying to get at is IF a dependent claim does not
> stand or fall with its independent claim, then the subject matter it claims
> is supposed to be patentably different from the independent claim… and
> therefore, it seems to me that that claimed subject matter should be
> summarized with a notation of its support in the specification.
>
>
>
> I do see the argument/interpretation against requiring such…
>
>
>
> BUT why not use the Summary to make it easier for the APJs to understand
> the applicant’s interpretation/scope of the claims and help them with
> easily finding where support in the spec is rather than having to dig
> around on their own (assuming they are inclined)?
>
>
>
> Suzannah K. Sundby <http://www.linkedin.com/in/ssundby/> *|* Partner
>
> *canady + lortz** LLP* <http://www.canadylortz.com/>
>
> 1050 30th Street, NW
>
> Washington, DC 20007
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> suzannah at canadylortz.com
>
> www.canadylortz.com
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>
> *From:* Suzannah K. Sundby
> *Sent:* Monday, March 17, 2025 7:23 AM
> *To:* David Boundy <DavidBoundyEsq at gmail.com>
> *Cc:* For patent practitioners. This is not for laypersons to seek legal
> advice. <patentpractice at oppedahl-lists.com>
> *Subject:* RE: [Patentpractice] Question about appeal brief
>
>
>
> 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
>
> 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 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
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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
> proprietary, privileged or confidential, or otherwise legally exempt from
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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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