37 C.F.R. § 1.75

Claim(s)

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(a) The specification must conclude with a claim particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention or discovery.

(b) More than one claim may be presented provided they differ substantially from each other and are not unduly multiplied.

(c) One or more claims may be presented in dependent form, referring back to and further limiting another claim or claims in the same application. Any dependent claim which refers to more than one other claim (“multiple dependent claim”) shall refer to such other claims in the alternative only. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. For fee calculation purposes under § 1.16, a multiple dependent claim will be considered to be that number of claims to which direct reference is made therein. For fee calculation purposes also, any claim depending from a multiple dependent claim will be considered to be that number of claims to which direct reference is made in that multiple dependent claim. In addition to the other filing fees, any original application which is filed with, or is amended to include, multiple dependent claims must have paid therein the fee set forth in § 1.16(j). Claims in dependent form shall be construed to include all the limitations of the claim incorporated by reference into the dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of each of the particular claims in relation to which it is being considered.

(d)(1) The claim or claims must conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description. (See § 1.58(a).)

(2) See §§ 1.141 to 1.146 as to claiming different inventions in one application.

(e) Where the nature of the case admits, as in the case of an improvement, any independent claim should contain in the following order:

(1) A preamble comprising a general description of all the elements or steps of the claimed combination which are conventional or known,

(2) A phrase such as “wherein the improvement comprises,” and

(3) Those elements, steps and/or relationships which constitute that portion of the claimed combination which the applicant considers as the new or improved portion.

(f) If there are several claims, they shall be numbered consecutively in Arabic numerals.

(g) The least restrictive claim should be presented as claim number 1, and all dependent claims should be grouped together with the claim or claims to which they refer to the extent practicable.

(h) The claim or claims must commence on a separate physical sheet or electronic page. Any sheet including a claim or portion of a claim may not contain any other parts of the application or other material.

(i) 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.

(35 U.S.C. 6; 15 U.S.C. 1113, 1126) [31 FR 12922, Oct. 4, 1966, as amended at 36 FR 12690, July 3, 1971; 37 FR 21995, Oct. 18, 1972; 43 FR 4015, Jan. 31, 1978; 47 FR 41276, Sept. 17, 1982; 61 FR 42803, Aug. 19, 1996; 68 FR 38628, June 30, 2003; 70 FR 3891, Jan. 27, 2005; 72 FR 46836, Aug. 21, 2007; 74 FR 52688, Oct. 14, 2009]

Notes of Decisions

Cited in 99 cases (21 in the last 5 years), 1954–2026 · leading case: Edward H. Phillips v. Awh Corp., Hopeman Bros., Inc., & Lofton Corp., Defendants-Cross, 415 F.3d 1303 (Fed. Cir. 2006).

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Edward H. Phillips v. Awh Corp., Hopeman Bros., Inc., & Lofton Corp., Defendants-Cross, 415 F.3d 1303 (Fed. Cir. 2006). “” 37 C.F.R. § 1.75 (d)(1). It is therefore entirely appropriate for a court, when conducting claim construction, to rely heavily on the written description for guidance as to the meaning of the claims.”

Arctic Cat Inc. v. Gep Power Prods., Inc., 919 F.3d 1320 (Fed. Cir. 2019). · cites it 2× “So do we. We look to case law from our court and its predecessor.”

Tafas v. Dudas, 541 F. Supp. 2d 805 (E.D. Va. 2008). · cites it 4× “at 46836; 37 C.F.R. § 1.75 (b)(1). An applicant who wants to exceed either limitation must provide an “examination support document” (“ESD”) containing information about the claims that may assist the examiner in determining the patentability of the claimed invention.”

Epcon Gas Sys., Inc. & Norman S. Loren v. Bauer Compressors, Inc., Defendant-Cross, 279 F.3d 1022 (Fed. Cir. 2002). “1997) (quoting 37 C.F.R. § 1.75 (e) (1996)). However, in Rowe v.”

Plastic Container Corp. v. Cont'l Plastics of Oklahoma, Inc., 607 F.2d 885 (10th Cir. 1979). · cites it 2× “(4) Claims 1-7 are invalid for being “in contravention of the provisions of Rule 75(d)(1),” 37 C.F.R. § 1.75 (d)(1), 9 because all claims *892 contain terms (“at a location not coincident with the location of the key recess,” “coincident,” and “recess”) which do not find clear…”

Wells Mfg. Corp., a Wisconsin Corp. v. Littelfuse, Inc., a Texas Corp., 547 F.2d 346 (7th Cir. 1976). · cites it 4× “Wells relies upon 37 C.F.R. § 1.75 (e), 4 to further support the proposition that the link members are part of the patented combination.”

Monsanto Co. v. Syngenta Seeds, Inc., 503 F.3d 1352 (Fed. Cir. 2007). “01(m), (n) (August 2006); *1358 37 C.F.R. § 1.75 (2007) (setting forth prop-er drafts for independent and dependent claims).”

Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., & Guidant Corp., Defendants-Cross, 248 F.3d 1303 (Fed. Cir. 2001). “The preliminary amendment filed with the '727 application indicates that the newly submitted claims contained terms or phrases that did not have proper antecedent basis, as required by 37 CFR § 1.75 (d)(1), and that the changes to the specification supplied the required…”

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., A/K/A Smc Corp., & Smc Pneumatics, Inc., 234 F.3d 558 (Fed. Cir. 2000). “§ 112 , ¶ 4 (1994); 37 C.F.R. § 1.75 (c) (1999). . SMC did not argue prosecution history es-toppel with respect to the Carroll patent before the district court.”

Delong Corp. v. Raymond Int'l, Inc, 622 F.2d 1135 (3rd Cir. 1980). “The elements of such a patent claim are set forth at 37 C.F.R. § 1.75 (e) and are: (1) a preamble comprising a general description of all the elements or steps of the claimed combination which are conventional or known, (2) a phrase such as ‘wherein the improvement comprises’…”

Tafas v. Doll, 559 F.3d 1345 (Fed. Cir. 2009). · cites it 2× “37 C.F.R. § 1.75 (b)(1). The requirements for ESDs are set forth in Final Rule 265.”

Pfizer Inc. v. Ranbaxy Labs. Ltd., 405 F. Supp. 2d 495 (D. Del. 2005). · cites it 2× “01(h) provides: Where a claim in dependent form is not considered to be a proper dependent claim under 37 C.F.R. 1.75(c), the examiner should object to such claim under 37 C.”

Show all 99 citing cases →

— 37 C.F.R. § 1.75(b) — 3 cases

In re Corcoran, 640 F.2d 1331 (C.C.P.A. 1981).

Hyatt v. Hirshfeld (Fed. Cir. 2021).

— 37 C.F.R. § 1.75(c) — 1 case

Pfizer Inc. v. Ranbaxy Labs. Ltd., 405 F. Supp. 2d 495 (D. Del. 2005). “01(h) provides: Where a claim in dependent form is not considered to be a proper dependent claim under 37 C.F.R. 1.75(c), the examiner should object to such claim under 37 C.”

— 37 C.F.R. § 1.75(d) — 2 cases

In re Mercier, 515 F.2d 1161 (C.C.P.A. 1975).

Epic Metals Corp. v. Consol. Sys., Inc., 19 F. Supp. 2d 1296 (M.D. Fla. 1998).

— 37 C.F.R. § 1.75(d)(1) — 2 cases

Tandon Corp. v. U.S. Int'l Trade Comm'n, 831 F.2d 1017 (Fed. Cir. 1987).

— 37 C.F.R. § 1.75(e) — 4 cases

Boler Co. v. Watson & Chalin Mfg., Inc., 372 F. Supp. 2d 1013 (N.D. Ohio 2005).

Synbiotics Corp. v. Heska Corp., 137 F. Supp. 2d 1198 (S.D. Cal. 2000).

Geo. M. Martin Co. v. All. Mach. Sys. Int'l, LLC, 560 F. Supp. 2d 893 (N.D. Cal. 2008).

Eli Lilly & Co. v. Apotex, Inc. (S.D. Ind. 2019).

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