MPEP § 608.01(m) — Form of Claims (Annotated Rules)
§608.01(m) Form of Claims
This page consolidates and annotates all enforceable requirements under MPEP § 608.01(m), including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Form of Claims
This section addresses Form of Claims. Primary authority: 35 U.S.C. 112(d), 37 CFR 1.75(i), and 37 CFR 1.75. Contains: 1 permission and 3 other statements.
Key Rules
35 U.S.C. 112 – Disclosure Requirements
When two claims in an application comply with the requirements of 35 U.S.C. 112(d) but are duplicates, or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other claim under 37 CFR 1.75 as being a substantial duplicate of the allowed claim. Note however, that court decisions have confirmed applicant’s right to restate (i.e., by plural claiming) the invention in a reasonable number of ways. Indeed, a mere difference in scope between claims has been held to be enough. Form paragraphs 7.05.05 and 7.05.06 may be used where duplicate claims are present in an application.
When two claims in an application comply with the requirements of 35 U.S.C. 112(d) but are duplicates, or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other claim under 37 CFR 1.75 as being a substantial duplicate of the allowed claim. Note however, that court decisions have confirmed applicant’s right to restate (i.e., by plural claiming) the invention in a reasonable number of ways. Indeed, a mere difference in scope between claims has been held to be enough. Form paragraphs 7.05.05 and 7.05.06 may be used where duplicate claims are present in an application.
When two claims in an application comply with the requirements of 35 U.S.C. 112(d) but are duplicates, or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other claim under 37 CFR 1.75 as being a substantial duplicate of the allowed claim. Note however, that court decisions have confirmed applicant’s right to restate (i.e., by plural claiming) the invention in a reasonable number of ways. Indeed, a mere difference in scope between claims has been held to be enough. Form paragraphs 7.05.05 and 7.05.06 may be used where duplicate claims are present in an application.
When two claims in an application comply with the requirements of 35 U.S.C. 112(d) but are duplicates, or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other claim under 37 CFR 1.75 as being a substantial duplicate of the allowed claim. Note however, that court decisions have confirmed applicant’s right to restate (i.e., by plural claiming) the invention in a reasonable number of ways. Indeed, a mere difference in scope between claims has been held to be enough. Form paragraphs 7.05.05 and 7.05.06 may be used where duplicate claims are present in an application.
See MPEP § 608.01(n), subsection II, for rejections under 35 U.S.C. 112(d) of dependent claims that do not specify a further limitation of the subject matter claimed. See MPEP § 804 for double patenting rejections of claims in different applications that are not patentable over each other.
Alternative Limitations (MPEP 2173.05(h))
2. If the informalities render the claim(s) indefinite, use form paragraph 7.34.01 instead to reject the claim(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph.
1. If the lack of parentheses renders the claim(s) indefinite, use form paragraph 7.34.01 instead to reject the claim(s) under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Dependent Claim Requirements (112(d))
3. When a dependent claim does not specify a further limitation of the subject matter claimed as required by 35 U.S.C. 112(d), the dependent claim should be rejected using form paragraphs 7.36 and 7.36.01. See MPEP § 608.01(n), subsection III. It is not necessary to also warn of the prohibition against duplicate claims using this form paragraph.
2. When a dependent claim does not specify a further limitation of the subject matter claimed as required by 35 U.S.C. 112(d), the dependent claim should be rejected using form paragraphs 7.36 and 7.36.01. See MPEP § 608.01(n), subsection III. It is not necessary to also object to the improper dependent claim using this form paragraph.
Citations
| Primary topic | Citation |
|---|---|
| Alternative Limitations (MPEP 2173.05(h)) | 35 U.S.C. § 112 |
| Alternative Limitations (MPEP 2173.05(h)) | 35 U.S.C. § 112(b) |
| 35 U.S.C. 112 – Disclosure Requirements Dependent Claim Requirements (112(d)) | 35 U.S.C. § 112(d) |
| – | 37 CFR § 1.121(c) |
| – | 37 CFR § 1.71(a) |
| 35 U.S.C. 112 – Disclosure Requirements | 37 CFR § 1.75 |
| – | 37 CFR § 1.75(e) |
| – | 37 CFR § 1.75(i) |
| 35 U.S.C. 112 – Disclosure Requirements Dependent Claim Requirements (112(d)) | MPEP § 608.01(n) |
| 35 U.S.C. 112 – Disclosure Requirements | MPEP § 804 |
| – | Form Paragraph § 7.05.05 |
| – | Form Paragraph § 7.05.06 |
| Alternative Limitations (MPEP 2173.05(h)) | Form Paragraph § 7.34.01 |
| – | See Fressola v. Manbeck, 36 USPQ2d 1211 (D.D.C. 1995) |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 608.01(m) — Form of Claims
Source: USPTO608.01(m) Form of Claims [R-10.2019]
The claim or claims must commence on a separate physical sheet or electronic page and should appear after the detailed description of the invention. Any sheet including a claim or portion of a claim may not contain any other parts of the application or other material. While there is no set statutory form for claims, the present Office practice is to insist that each claim must be the object of a sentence starting with “I (or we) claim,” “The invention claimed is” (or the equivalent). If, at the time of allowance, the quoted terminology is not present, it is inserted by the Office of Data Management. Each claim begins with a capital letter and ends with a period. Periods may not be used elsewhere in the claims except for abbreviations. See Fressola v.Manbeck, 36 USPQ2d 1211 (D.D.C. 1995). Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation, 37 CFR 1.75(i).
There may be plural indentations to further segregate subcombinations or related steps. In general, the printed patent copies will follow the format used but printing difficulties or expense may prevent the duplication of unduly complex claim formats.
Reference characters corresponding to elements recited in the detailed description and the drawings may be used in conjunction with the recitation of the same element or group of elements in the claims. The reference characters, however, should be enclosed within parentheses so as to avoid confusion with other numbers or characters which may appear in the claims. Generally, the presence or absence of such reference characters does not affect the scope of a claim.
Many of the difficulties encountered in the prosecution of patent applications after final rejection may be alleviated if each applicant includes, at the time of filing or no later than the first reply, claims varying from the broadest to which he or she believes he or she is entitled to the most detailed that he or she is willing to accept.
Claims should preferably be arranged in order of scope so that the first claim presented is the least restrictive. All dependent claims should be grouped together with the claim or claims to which they refer to the extent practicable. Where separate species are claimed, the claims of like species should be grouped together where possible. Similarly, product and process claims should be separately grouped. Such arrangements are for the purpose of facilitating classification and examination.
When two claims in an application comply with the requirements of 35 U.S.C. 112(d) but are duplicates, or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other claim under 37 CFR 1.75 as being a substantial duplicate of the allowed claim. Note however, that court decisions have confirmed applicant’s right to restate (i.e., by plural claiming) the invention in a reasonable number of ways. Indeed, a mere difference in scope between claims has been held to be enough. Form paragraphs 7.05.05 and 7.05.06 may be used where duplicate claims are present in an application.
See MPEP § 608.01(n), subsection II, for rejections under 35 U.S.C. 112(d) of dependent claims that do not specify a further limitation of the subject matter claimed. See MPEP § 804 for double patenting rejections of claims in different applications that are not patentable over each other.
The form of claim required in 37 CFR 1.75(e) is particularly adapted for the description of improvement-type inventions. It is to be considered a combination claim. The preamble of this form of claim is considered to positively and clearly include all the elements or steps recited therein as a part of the claimed combination.
The following form paragraphs may be used to object to the form of the claims.
¶ 6.18.01 Claims: Placement
The claims in this application do not commence on a separate sheet or electronic page in accordance with 37 CFR 1.52(b)(3) and 1.75(h). Appropriate correction is required in response to this action.
¶ 7.29.01 Claims Objected to, Minor Informalities
Claim[1] objected to because of the following informalities: [2]. Appropriate correction is required.
Examiner Note:
- 1. Use this form paragraph to point out minor informalities such as spelling errors, inconsistent terminology (see the requirement of 37 CFR 1.71(a) for “full, clear, concise, and exact terms”), etc., which should be corrected.
- 2. If the informalities render the claim(s) indefinite, use form paragraph 7.34.01 instead to reject the claim(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph.
¶ 7.29.02 Claims Objected to, Reference Characters Not Enclosed Within Parentheses
The claims are objected to because they include reference characters which are not enclosed within parentheses.
Reference characters corresponding to elements recited in the detailed description of the drawings and used in conjunction with the recitation of the same element or group of elements in the claims should be enclosed within parentheses so as to avoid confusion with other numbers or characters which may appear in the claims. See MPEP § 608.01(m).
Examiner Note:
- 1. If the lack of parentheses renders the claim(s) indefinite, use form paragraph 7.34.01 instead to reject the claim(s) under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112 , second paragraph.
¶ 7.29.03 Claims Objected to, Spacing of Lines
The claims are objected to because the lines are crowded too closely together, making reading difficult. Substitute claims with lines one and one-half or double spaced on good quality paper are required. See 37 CFR 1.52(b).
¶ 7.05.05 Duplicate Claims, Warning
Applicant is advised that should claim [1] be found allowable, claim [2] will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Examiner Note:
- 1. Use this form paragraph whenever two claims are found to be substantial duplicates, but they are not allowable. This will give the applicant an opportunity to correct the problem and avoid a later objection.
- 2. If the claims are allowable, use form paragraph 7.05.06.
- 3. When a dependent claim does not specify a further limitation of the subject matter claimed as required by 35 U.S.C. 112(d), the dependent claim should be rejected using form paragraphs 7.36 and 7.36.01. See MPEP § 608.01(n), subsection III. It is not necessary to also warn of the prohibition against duplicate claims using this form paragraph.
¶ 7.05.06 Duplicate Claims, Objection
Claim [1] objected under 37 CFR 1.75 as being a substantial duplicate of claim [2]. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Examiner Note:
- 1. If the duplicate claims are not allowable, use form paragraph 7.05.05.
- 2. When a dependent claim does not specify a further limitation of the subject matter claimed as required by 35 U.S.C. 112(d), the dependent claim should be rejected using form paragraphs 7.36 and 7.36.01. See MPEP § 608.01(n), subsection III. It is not necessary to also object to the improper dependent claim using this form paragraph.
Amendments to the claims must be in compliance with 37 CFR 1.121(c).