Comments on: Q) Multiplicity http://mypatentbar.com/2008/08/19/q-multiplicity/ Patent Bar Review and Study Guide Tue, 07 Feb 2012 03:15:12 +0000 http://wordpress.org/?v=2.9.2 hourly 1 By: Alfredo http://mypatentbar.com/2008/08/19/q-multiplicity/#comment-29817 Alfredo Tue, 24 Jan 2012 17:43:42 +0000 http://patentbar.wordpress.com/?p=611#comment-29817 Got this 1/23/12 Got this 1/23/12

]]> By: Axo http://mypatentbar.com/2008/08/19/q-multiplicity/#comment-12610 Axo Wed, 29 Jun 2011 15:19:50 +0000 http://patentbar.wordpress.com/?p=611#comment-12610 Got this one 6/28/11 Got this one 6/28/11

]]> By: Becker http://mypatentbar.com/2008/08/19/q-multiplicity/#comment-10885 Becker Tue, 17 May 2011 19:21:24 +0000 http://patentbar.wordpress.com/?p=611#comment-10885 I got this question 5/16/2011. I got this question 5/16/2011.

]]> By: epep http://mypatentbar.com/2008/08/19/q-multiplicity/#comment-8272 epep Mon, 07 Mar 2011 16:59:08 +0000 http://patentbar.wordpress.com/?p=611#comment-8272 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. 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.

]]> By: ELS http://mypatentbar.com/2008/08/19/q-multiplicity/#comment-8258 ELS Mon, 07 Mar 2011 16:05:54 +0000 http://patentbar.wordpress.com/?p=611#comment-8258 Saw this one yesterday, chose the answer where the examiner calls the applicant. Saw this one yesterday, chose the answer where the examiner calls the applicant.

]]> By: Tom http://mypatentbar.com/2008/08/19/q-multiplicity/#comment-6275 Tom Tue, 11 Jan 2011 22:01:11 +0000 http://patentbar.wordpress.com/?p=611#comment-6275 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" 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”

]]> By: Jake http://mypatentbar.com/2008/08/19/q-multiplicity/#comment-1398 Jake Sun, 11 Oct 2009 22:48:56 +0000 http://patentbar.wordpress.com/?p=611#comment-1398 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 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

]]> By: Jake http://mypatentbar.com/2008/08/19/q-multiplicity/#comment-1397 Jake Sun, 11 Oct 2009 22:42:04 +0000 http://patentbar.wordpress.com/?p=611#comment-1397 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. 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.

]]> By: patentbar http://mypatentbar.com/2008/08/19/q-multiplicity/#comment-1396 patentbar Wed, 20 Aug 2008 00:45:21 +0000 http://patentbar.wordpress.com/?p=611#comment-1396 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 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

]]>