Q) Multiplicity

by patentbar on August 19, 2008 · 13 comments

in Exam Questions

I recall the multiplicity question being related to a non-provisional App w/ one utility claim and more than 900 claims covering small ornamental differences.  Indeed, that question’s answer involved an examiner calling the applicant by phone w/ suggestion that the applicant select a few claims for examination.

Multiplicity question – applicant has one utility claim and more than 900 claims covering small ornamental differences. Answer is that the examiner should call the applicant and have him select a few claims for examination.

M.P.E.P. Section 2173.05(n), Specific Topics Related to Issues Under 35 U.S.C.

If a rejection on multiplicity is in order the examiner should make a telephone call explaining that the claims are unduly multiplied and will be rejected on that ground. Note MPEP Section 408. The examiner should request selection of a specified number of claims for purposes of examination.

{ 13 comments… read them below or add one }

1 patentbarNo Gravatar August 19, 2008 at 8:45 pm

One question about 1 independent claim and 984(?) dependent claims that were repetitious. What should examiner do? One answer choice was whether examiner will ask applicant to resubmit claims or something like that. Another was for examiner to reject as being prolix. yet another choice was that examiner will select the 1st 20 since the fees cover that

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2 JakeNo Gravatar October 11, 2009 at 6:42 pm

MPEP 2173.05(m) Prolix – Examiners should reject claims as prolix only when they contain such long recitations or unimportant details that the scope of the claimed invention is rendered indefinite thereby. Claims are rejected as prolix when they contain long recitations that the metes and bounds of the claimed subject matter cannot be determined.

MPEP 2173.05(n) Multiplicity – Where, in view of the nature and scope of applicant’s invention, applicant presents an unreasonable number of claims which are repetitious and multiplied, the net result of which is to confuse rather than to clarify, a rejection on undue multiplicity based on 35 U.S.C. 112, second paragraph, may be appropriate. Undue multiplicity rejections based on 35 U.S.C. 112, second paragraph, should be applied judiciously and should be rare.
If an undue multiplicity rejection under 35 U.S.C. 112, second paragraph, is appropriate, the examiner should:

(1) contact applicant by telephone explaining that the claims are unduly multiplied and will be rejected under 35 U.S.C. 112, second paragraph. Note MPEP § 408.

(2) The examiner should also request that applicant select a specified number of claims for purpose of examination. If applicant is willing to select, by telephone, the claims for examination, an undue multiplicity rejection on all the claims based on 35 U.S.C. 112, second paragraph, should be made in the next Office action along with an action on the merits on the selected claims.

If applicant refuses to comply with the telephone request, an undue multiplicity rejection of all the claims based on 35 U.S.C. 112, second paragraph, should be made in the next Office action. Applicant’s reply must include a selection of claims for purpose of examination, the number of which may not be greater than the number specified by the examiner.

In response to applicant’s reply, if the examiner adheres to the undue multiplicity rejection, it should be repeated and the selected claims will be examined on the merits.

This procedure preserves applicant’s right to have the rejection on undue multiplicity reviewed by the Board of Patent Appeals and Interferences.

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3 JakeNo Gravatar October 11, 2009 at 6:48 pm

I like to shorten it down, to make its easier to remember:

Prolix – too long of a claim, or too much detail

Multiplicity – unreasonable number of claims, repetitious & multiplied

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4 TomNo Gravatar January 11, 2011 at 5:01 pm

The answer to this question was like right out of the mpep word for word something like “The examiner should also request that applicant select a specified number of claims for purpose of examination. If applicant is willing to select, by telephone, the claims for examination, an undue multiplicity rejection on all the claims based on 35 U.S.C. 112, second paragraph”

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5 ELSNo Gravatar March 7, 2011 at 11:05 am

Saw this one yesterday, chose the answer where the examiner calls the applicant.

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6 epepNo Gravatar March 7, 2011 at 11:59 am

My version of this was screwy. I went with answer (e), that examiner should call applicant. None of the other qs mentioned the phone. But (e) had some weird grammatical construction – I want to say that it made it sound that the examiner would call *applicant* (not atty/agent), then if the applicant agreed to it, canceled everything. This is true (found it in the MPEP) – the language says that the examiner calls the applicant, but it leaves out the next step, post cancellation. The answer made it sound like if you write up 900 claims (mine wasn’t a broom, I don’t think), then you lose your chance at patenting. So watch out for that. I put (e) and I passed, so who knows.

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7 BeckerNo Gravatar May 17, 2011 at 3:21 pm

I got this question 5/16/2011.

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8 AxoNo Gravatar June 29, 2011 at 11:19 am

Got this one 6/28/11

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9 AlfredoNo Gravatar January 24, 2012 at 12:43 pm

Got this 1/23/12

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10 TheGhostOfBilskiNo Gravatar April 10, 2012 at 11:38 pm

ditto 4/6/2012

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11 GDBNo Gravatar April 19, 2012 at 7:07 pm

Broom question – 19/04/12

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12 http://banksfindyou.com/view/artefact.php?artefact=783&view=354No Gravatar July 13, 2013 at 7:28 am

Q) Multiplicity

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13 TJWSNo Gravatar November 22, 2016 at 8:30 am

This still comes up. 11/21/2016

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