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Question:
Should a dependent claim that does not specify a further limitation of the subject matter claimed be rejected under 35 USC 112(d)?
Answer:
Yes, a dependent claim that does not specify a further limitation of the subject matter claimed should be rejected under 35 U.S.C. 112(d).
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. A mere difference in scope between claims has been held to be enough.
Chapter Details:
The answer to this question can be found in chapter 700 of the MPEP. This chapter covers Examination of Applications.
The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 706.03(k) of the MPEP. The following is a brief summary of section 706.03(k).
706.03(k) Duplicate Claims
A dependent claim that does not specify a further limitation of the subject matter claimed should be rejected under 35 U.S.C. 112(d).
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.