Q) 147 Claim Counting (10.03.50a)

by patentbar on October 31, 2007 · 22 comments

in Exam Questions

As of November 2, 2007, there is only one claim counting question in the Prometric database, and it was the exact same question from a prior exam (October 2003 AM #50). Please comment if anyone else had a different experience. (e.g., There may be a similar question on the computerized test requiring you to calculate total claim fees based on total number of claims. There was a question like that on one of the old exams but I can’t find it now.)

50. Ben hires a registered practitioner to prosecute his patent application. The practitioner drafted an application having fifteen claims. Claim 1 is independent, and each of claims 2-15 are singularly dependent upon claim 1. A proper non-final Office action is mailed to the practitioner. Following consultation with Ben, the practitioner timely prepared, signed, and filed a reply to the Office action containing an amendment that does not add new matter, but does add claims 16-27. Each of claims 16-27 is directed to the same invention sought to be patented through claims 1-15. The dependency of each of claims 16-27 reads “any of claims 5-15.” For purposes of fee calculation in accordance with the patent laws, rules and procedures as related in the MPEP, how many total claims are contained in the application after the amendment is entered?

(A) One hundred thirty-six.

(B) One hundred thirty-five.

(C) Twenty-seven.

(D) One hundred forty-seven.

(E) Fifteen.

Ben has a patent application with one independent claim, 14 singularly dependent claims (claims 2-15), and 12 multiple dependent claims (claims 16-27). How many total claims does Ben’s application have? ANSWER: (D) is the most correct answer. 37 CFR § 1.75; MPEP § 608.01(n). As explained in MPEP § 608.01(n), under the heading “Multiple Dependent Claims,” subheading “Acceptable Multiple Dependent Claim Wording” the multiple dependent claim wording of new claims 16-27 is proper. See, for example, “any one of the preceding claims,” and “in any of claims 1-3 or 7-9.” 37 CFR § 1.75(c) states “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.” Therefore, claims 16-27 would each have a claim value of eleven and the total number of claims for fee calculation is one hundred forty-seven (12 x 11 = 132 + 15 = 147). Answers (A) and (B) are incorrect because they are not the correct total. Answer (C) is incorrect because the multiple dependent claims have not been calculated in accordance with 37 CFR § 1.75. Answer (E) is incorrect because the question asks for the total after the amendment adding claims 16-27 has been entered.

1 patentbarNo Gravatar August 18, 2008 at 4:11 pm

Dependent claim counting: I haven’t heard many people say that “147” is continuing to pop up on the exam. (It may be phased out. One test taker from the last month reported a claim counting question where they had to choose between 5,6,7,8, or 9. Does anyone know which test this came from?

2 Juris PrudenceNo Gravatar June 30, 2012 at 4:25 am

I got that question in mid-June. Haven’t seen it before, and I have gone through all the past exams available here.
It asked for you to only count the dependent claims, not independent (watch out for that switch). And it required that you understand when a dependent claim counts as “1” versus as “2”.
I picked 8 on my question, but no idea if it is right (forgot fact pattern)
I passed though!

JP

3 patentbarNo Gravatar August 19, 2008 at 7:54 pm

Don’t know the exam it came from but the counting claims question showed up again – claims 1-15; 1 is only independent claim, all other claims dependent on 1; add claims 16-27 all are dependent on claims 5-15 – what is the total of all the claims for fee purposes -Answer: 1-15 are each worth 1 pt = 15pts total; 16-27 are each counted 11 times (i.e – 1,5, 16 + 1,6,16 + 1,7,16, all the way up to 15 – repeat this process for the rest of the claims 17-27)= 12 claims x 11pts = 132 + 15 = 147 is the correct answer (OCT 2003 AM Question 50)(This question also showed up on a Jan 2007 exam and a March 2008 exam)

4 patentbarNo Gravatar August 19, 2008 at 8:18 pm

Recent variant – Multiple-Dependent claims: – 1 is indep, 2 depends from 1, 3 depends from 2, 4 depends from 2 and 3, 5 depends from 3, 6 depends from 2, 3, and 5. I counted 8 dependent claims.

5 PBNo Gravatar June 27, 2011 at 11:52 pm

I think the answer is 9 with the only variant here is claim 6 should be counted as 3 instead of 2. Correct me if I am wrong.

6 fengyuwuzuNo Gravatar August 5, 2011 at 3:20 pm

I agree with 9

7 HSNo Gravatar November 21, 2011 at 10:14 pm

I would go with 6 total claims. Claim 4 and 6 are improper multiple dependent claims, hence counted only once.

8 MNo Gravatar January 10, 2012 at 2:06 am

HS is correct because Claims 4 and 6 are improper because they use “AND” which is not allowed, and therefore are only calculated as one claim for fee purposes.

PB and fengyuwuzu would be correct if claim 4 and claim 6 used “OR” instead of “AND”.

9 TheGhostOfBilskiNo Gravatar April 5, 2012 at 5:26 pm

Agreed that there are 6 total claims. Claims 4 and 6 are improper multiple dependent claims and are therefore each counted only once, no matter how many claims they improperly depend from. Agreed that using “OR” would be ok. However, keep in mind that a multiple dependent claim is also improper if it depends from another multiple dependent claim (which is not the case here).

Example: if you were to add a claim 7 that depends from claim 4 AND/OR 6, it would only count once in both the “AND” & “OR” scenario (the AND scenario b/c that is defacto improper; and in the OR scenario b/c it would depend from other mult. dependent claims).

As another example, say claim 8 and claim 9 both depend from claim 2 OR 3. These are proper multiple dependent claims and would count twice each (claim 8=2; claim 9=2). However, if claim 10 depends from claim 8 OR 9, it would be an improper multiple dependent claim (b/c it depends from other mult. dependent claims) and count only once.

10 scruffNo Gravatar June 20, 2009 at 3:36 pm

Obviously indpt. claims are worth 1 point each. It looks like dep. claims are also worth 1 point. Am I to understand that MDC are worth the total number of claims on which they depend? So if claim 9 depends on any of claims 1-5, then claim 9 is worth 5 points?

So in the above example, there are 12 such MDCs, each depending on 11 claims?

11 PHOSITANo Gravatar March 1, 2011 at 10:53 am

Almost. I was given this hint for counting multiple dependent claims (MDC): “a claim counts for itself and for the number of claims to which it refers.”

So… because there are 10 claims referred to in the span 5-15, for claims 16-27 count one for the MDC itself and one for each other claim referred to: 1+10 = 11. There are 12 such MDCs in 16-27, so… 11×12 = 132. Then add in the independent and (singularly) dependent claims: 1 + 14 + 132 = 147

12 howie2978No Gravatar February 14, 2011 at 3:43 pm

Saw this question on the Feb 9, 2011 exam.

13 ELSNo Gravatar March 1, 2011 at 3:40 pm

PHOSITA,

I don’t think your explanation of counting multiple dependent claims is quite right. From 607 “Fees for a proper multiple dependent claim are calculated based on the number of claims to which the multiple dependent claim refers…”

There are 11 claims referred to in the span 5-15, not 10. The rest of your math is correct.

14 KFNo Gravatar March 11, 2012 at 10:23 pm

Honestly-My strategy with these is to skip them and memorize this question. I can focus on other areas to gain points. there. Not sure why these are hard for me. I think they are fun, but they cause me stress! That’s one strategy, anyway.

15 SolNo Gravatar April 2, 2012 at 1:19 am

Just understand that

a multiple independent claim = multiple independent claims

it is just a easy way to write several independent claims with the same feature all together.

16 Juris PrudenceNo Gravatar June 30, 2012 at 4:21 am

KF and others – I took the exam in March and got this claim counting question. You are right, easy point – “147.”
But I didn’t pass that one and retook it this June, passed!
In the June exam, I got a claim counting question that was new and required doing the calculation properly, and understanding how multiple dependent claims are counted. I was grateful I had reviewed that section in Chapter 600.
Doing the question took a few min, but it would’ve taken longer had I not already been familiar with claim counting in studying it.
So my advice is, fit in some time to review this before the exam ;-). I was so glad that I did!

JP

17 GDBNo Gravatar April 20, 2012 at 12:42 am

verbatim 04/19/12

18 jkpatentlawNo Gravatar June 16, 2012 at 6:56 pm

I hope I get it! This one is easy.

19 JudeNo Gravatar May 11, 2012 at 12:03 am

verbatim 5/10/12

20 IndiJonesNo Gravatar June 30, 2012 at 2:00 am

got this 6/29/12

21 DanitaNo Gravatar September 22, 2012 at 10:10 am

Claim 1 is independent. Claim 2 depends on claim 1, claim 3 depends on claim 2, claim 4 depends on claim 3. How many claims are there?

I was asked this for a secretarial exam and I answered 2. Was I wrong? I just don’t see multiple claims anymore.

22 KarlMalownzNo Gravatar September 29, 2012 at 3:34 pm

Got this 9/25/12

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