Broader Dependent Claims?

By Dennis Crouch

Butamax v. Gevo (Fed. Cir. 2014)

Butamax is a joint venture between BP and DuPont that focuses on creating butanol from corn and sugarcane. The company’s Patent No. 7,993,889 covers isobutanol production using a recombinant yeast. The claims particularly call-out the “engineered” pathway beginning with the raw biologic, passing through the various intermediaries, and resulting in butanol.

Now, the claims are interesting. Claim 1 is directed to a “method for producing isobutanol” that uses the “recombinant yeast microorganism.” Claim 12 is directed to “The recombinant yeast microorganism of claim 1.” Patent professionals will recognize the unusuality of this claim structure. Usually, a dependent claim is narrower than its referenced independent parentage. However, Butamax’s dependent claim 12 here is broader (in some ways) than the referenced claim 1. That is clear here since infringement of claim 1 (a method claim) requires practicing the method, but infringement of claim 12 (a composition claim) can be infringed merely by possession or potentially any use of that microorganism. In the software context, this type of claim structure is somewhat common and typically involves an independent algorithmic method claim followed by a dependent claim directed to a non-transitory computer readable memory storing instructions for causing a processor to complete

Dependent claims are authorized by the Patent Act. 35 U.S.C. § 112(d) states that:

(d) Reference in Dependent Forms. — [A] claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.

In my mind, the Butamax claim structure does not fit within the structure authorized by §112(d) because the full effect of the “method” limitation is not included in the dependent composition claim. The result then, could be invalidity either as indefinite or for failure to comply with §112(d).  See Pfizer, Inc. v. Ranbaxy Laboratories Ltd., 457 F.3d 1284 (Fed. Cir. 2006) (claim invalid for failure to properly structure the dependent claim).

Now, this claim form is similar to that used in product-by-process claims where a dependent product-by-process claim references the process described in a process claim. That type of claim has been accepted by the Federal Circuit on several occasions See Scripps Clinic & Research Found. v. Genentec, Inc. (Fed. Cir. 1991) (“product by process claims are not limited to product prepared by the process set forth in the claims”), overruled by Abbott Labs v. Sandoz (Fed. Cir. 2009) (en banc)

Here, the Butamax claim is not directed to a resulting process but instead to a component used in the method, but perhaps that is not a worthwhile distinction.  The appeal here arises from a district court finding that the claims were invalid on other grounds.  On appeal, the Federal Circuit vacated that decision and remanded for reconsideration by the district court. Perhaps we’ll see the 112(d) issue briefed next time around.

Once an independent claim is found patentable, examiners often give short consideration to the subsequent dependent claims.  That time-saving measure makes follows some logic since the dependent claims are supposed to be narrower than the allowed claim and thus should also be patentable over the prior art.  Of course, this is one situation where that logic fails.

98 thoughts on “Broader Dependent Claims?

  1. Off the main topic of this case, but has everybody read the Fed. Cir.’s decision on claim construction (changing the district court’s reasonable construction)? Yikes.

    In a nutshell, the patentee describes methods for engineering microbes to make isobutanol using hybrid structure/function language to describe the activities of the enzymes. The specific claim term at issue:

    the polypeptide that catalyzes a substrate
    to product conversion of acetolactate to 2,3-
    dihydroxyisovalerate is acetohydroxy acid isomeroreductase having the EC number 1.1.1.86

    The claim construction issue was whether this element was limited to enzymes which uses NADPH as a co-factor. The defendant uses a mutant enzyme that was modified to use NADH instead of NADPH (with improved yields of isobutanol).

    Any biotech practitioner will immediately want to know the answer to two key questions: (1) what does the Enzyme Commission entry say about EC 1.1.1.86; and (2) did the patentees provide a different definition; and (3) did the patentees make any other statements in prosecution consistent with (1) and (2)?

    The answer to question (1) : “EC number 1.1.1.86 names only NADP+ as an acceptor”.

    The answer to question (2): the patentee described the enzyme as “an enzyme that catalyzes the conversion of acetolactate
    to 2,3-dihydroxyisovalerate using NADPH
    (reduced nicotinamide adenine dinucleotide phosphate) as an electron donor.”

    The answer to (3): Butamax filed a later application stating that “discovery of a KARI enzyme that can use NADH as a cofactor as opposed to NADPH would be an advance in the art.” J.A. 8794.

    I’ll let you read Rader’s opinion for yourselves to see how he manages to swat away this evidence and other evidence to reach the conclusion that Butamax’s claims cover Gevo’s use of recombinant NADH-dependent enyzmes and microbes. It’s unbelievable.

    What’s unclear to me is what happens on remand. If there’s a silver lining for Gevo, it’s that Rader would seem to have left the door open for a serious written description challenge, even if the district court’s summary judgment on that issue was reversed.

    1. When you read a claim construction analysis like this, you can’t help but think that rather than any sort of “what would the skilled artisan understand” test, at least some judges at the Federal Circuit apply a different test, at least some of the time. That test seems to be “a claim shall not be limited in such a way that infringement can be avoided unless there is no other possible way for a judge to interpret the claim.”

      I just feel bad for district court judges when stuff like this happens. A very reasonable claim construction was replaced by something completely daft.

      A big thrust of Rader’s argument appears to be that “the phrase ‘red truck’ shouldn’t be construed as limited to trucks that are red. For starters, the term ‘truck’ by itself does not exclude blue trucks.”

      It really is that silly.

      1. MM, how much of that is that the fault of the advocates? If it’s truly that silly, shouldn’t the attorney defending the district court’s construction have been able to get that across?

        1. MM, how much of that is that the fault of the advocates?

          From the Opinion, it’s difficult to see where the advocates messed up. It’s easy for oral arguments to go off the rails when one or more of the judge’s has a crab up his behind about something. Not a whole lot that can be done about that.

          There was that odd moment earlier in procedural history of this case (referred to in the Opinion) where Rader expressed his disapproval about the claim construction. I don’t think it’s unreasonable to be skeptical when a claim construction appears to contain limitations that aren’t evident in the claim at first glance. But this case looks like a classic instance of a patentee being his own lexicographer for the purpose of obtaining the patent, then backing off from that lexicography when it’s convenient.

          Maybe there was something about the District Court judge’s opinion that stuck in the craw of the judges?

          In any event, god help anyone who tries to discern a practical lesson about how to construe claims in this decision.

          1. I agree that this claim construction decision is problematic and reflects the ongoing reality that CC is quite unpredictable and ultimately depends upon the Federal Circuit panel. In a sense, this decision should help make the case for deference.

            1. DC In a sense, this decision should help make the case for deference.

              Well, deference is always attractive when we agree that the district court’s construction makes more sense than the Federal Circuit’s construction.

              I would be happy if the Federal Circuit would simply defer to its own decisions (i.e., Phillips) when reviewing the District Court’s claim construction orders. It seems to me that the only “mistake” the District Court made here was not trying hard enough to see things the patentee’s way.

      2. “The answer to (3): Butamax filed a later application stating that “discovery of a KARI enzyme that can use NADH as a cofactor as opposed to NADPH would be an advance in the art.” J.A. 8794.

        I’ll let you read Rader’s opinion for yourselves to see how he manages to swat away this evidence and other evidence to reach the conclusion that Butamax’s claims cover Gevo’s use of recombinant NADH-dependent enyzmes and microbes. It’s unbelievable.”

        If the same inventors said “discovery of a KARI enzyme that can use NADH as a cofactor as opposed to NADPH would be an advance in the art.” you might have a point. But if someone else said it, for example, based on ignorance that it was already known or obvious, then you really don’t.

        1. If the same inventors said “discovery of a KARI enzyme that can use NADH as a cofactor as opposed to NADPH would be an advance in the art.” you might have a point. But if someone else said it, for example, based on ignorance that it was already known or obvious, then you really don’t.

          Can you explain? What’s your reasoning?

          1. If I say “X” and you say “not X”, as per usual, that just means I am right and you are wrong. That would be true, even if we both worked for the same mufti-national corporation.

            1. Les: If I say “X” and you say “not X”, as per usual, that just means I am right and you are wrong. That would be true, even if we both worked for the same mufti-national corporation.

              Uh … that’s nice, I suppose, but I still don’t understand what point you were trying to make. Maybe it’s a special joke between you and your li’l buddy. In that event, I’ll just let you two alone so you can savor it.

    2. Also buried in this Opinion is an interesting question regarding estoppel.

      Let’s say you write in your patent specification that “It would be a useful advance to create an X with novel property Y.” Your claims rely on such an advance being new. The Examiner finds reference A that allegedly describes the advance. You argue that A does not describe the advance. The Examiner then presents references B, C, and D that also allegedly describe the advance. You give up and amend the claims with additional limitations.

      Then you rely on an earlier-filed patent with claims describing X to sue a competior who is making “X with property Y”. You argue that the term X includes an “X with property Y” (i.e., the “advance” you referred to you in your later-filed application). You cite A, B, C, and D as proof that the term X included “X with property Y”.

      Should applicants be allowed to engage in this kind of rail switching? If so, why? What policy goal is being promoted by allowing that behavior?

    3. Dennis and Malcolm, I’m confused. If it is an opinion from Chief Judge Rader, how is it that the name that prefaces the first para is Linn? Could it be that, these days, Righteous Randy writes under a pseudonym?

  2. The real legal question is whether 112(d) provides the exclusive vehicle for short-hand in claims. This is the question that, if addressed by the Fed Cir will likely solve the problem here as well as in other of the many situations where claims refer to other claims but do not further limit them (eg, mixed statutory classes, product-by-process dependents, etc.).

    In other words, if the answer is “yes,” then all claims that refer to another claim must comply with 112(d), which means that they must further limit the referred claim. If a claim does not further limit the referred claim, as in the case here and similar situations, then the claim is invalid. Here, there would be one type of dependent claim – that which complies with 112(d). All others are invalid.

    But if the answer to the question is “no,” then there can be claims that simply refer to other claims as a matter of short-hand and need not further limit them. These may be called “dependent” claims but in actuality that is not technically proper because they do not further limit the referred claim. They should really be considered independent claims. One practical consequence of this is that the PTO will count these false dependents as dependents and the applicant will get away with not paying for the real number of independent claims.

    1. “This is the question that, if addressed by the Fed Cir will likely solve the problem here ”

      The federal circuit is the reason why we make rejections over 112 (d) in the first place. Prior to a half decade or a decade ago we just objected to such claims at the PTO. Then the fed circ. stepped in and ruled that such violations should be treated as a rejectable substantive issue under 112 d rather than a matter of form.

        1. Because some examiners haven’t got the message. And others think it’s just fine as is. The whole subject is cloudied up a bit for some folks. But bottom line is, the only statutory switchero that is permitted that I’ve seen so far is the product by process. And I’m willing to let that go either way in terms of product ind process dep or process ind product dep.

          Even then I sometimes restrict the product by process claim away from its parent because the device has to get grouped with the other device claims in the patent. That pbp claim then becomes a linking claim.

      1. MPEP 608.01(n)(II)-(III)

        II. TREATMENT OF IMPROPER DEPENDENT CLAIMS
        The initial determination, for fee purposes, as to whether a claim is dependent must be made by persons other than examiners; it is necessary, at that time, to accept as dependent virtually every claim which refers to another claim, without determining whether there is actually a true dependent relationship. The initial acceptance of a claim as a dependent claim does not, however, preclude a subsequent holding by the examiner that a claim is not a proper dependent claim. **

        The fact that a dependent claim which is otherwise proper might relate to a separate invention which would require a separate search or be separately classified from the claim on which it depends would not render it an improper dependent claim, although it might result in a requirement for restriction.

        The fact that the independent and dependent claims are in different statutory classes does not, in itself, render the latter improper. Thus, if claim 1 recites a specific product, a claim for the method of making the product of claim 1 in a particular manner would be a proper dependent claim since it could not be infringed without infringing claim 1. Similarly, if claim 1 recites a method of making a product, a claim for a product made by the method of claim 1 could be a proper dependent claim. On the other hand, if claim 1 recites a method of making a specified product, a claim to the product set forth in claim 1 would not be a proper dependent claim since it is conceivable that the product claim can be infringed without infringing the base method claim if the product can be made by a method other than that recited in the base method claim.

        When examining a dependent claim, the examiner should determine whether the claim complies with 35 U.S.C. 112, fourth paragraph, which requires that dependent claims contain a reference to a previous claim in the same application, specify a further limitation of the subject matter claimed, and include all the limitations of the previous claim. If the dependent claim does not comply with the requirements of 35 U.S.C. 112, fourth paragraph, the examiner should reject the dependent claim under 35 U.S.C. 112, fourth paragraph as unpatentable rather than objecting to the claim. Pfizer, Inc. v. Ranbaxy Labs., Ltd., 457 F.3d 1284, 1291-92, 79 USPQ2d 1583, 1589-90 (Fed. Cir. 2006) (holding a dependent claim in a patent invalid for failure to comply with 35 U.S.C. 112, fourth paragraph). Although the requirements of 35 U.S.C. 112, fourth paragraph are related to matters of form, non compliance with 35 U.S.C. 112, fourth paragraph renders the claim unpatentable just as non-compliance with other paragraphs of 35 U.S.C. 112 would. For example, a dependent claim must be rejected under 35 U.S.C. 112, fourth paragraph if it omits an element from the claim upon which it depends or it fails to add a limitation to the claim upon which it depends.

        Claims which are in improper dependent form for failing to further limit the subject matter of a previous claim, or for not including every limitation of the claim from which it depends, should be rejected under 35 U.S.C. 112, fourth paragraph by using form paragraphs 7.36 and. 7.36.01.

        III. INFRINGEMENT TEST
        The test as to whether a claim is a proper dependent claim is that it shall include every limitation of the claim from which it depends (35 U.S.C. 112, fourth paragraph) or in other words that it shall not conceivably be infringed by anything which would not also infringe the basic claim. > Another requirement is that the dependent claim must specify a further limitation(s) of the subject matter claimed. <

        A dependent claim does not lack compliance with 35 U.S.C. 112, fourth paragraph, simply because there is a question as to * the significance of the further limitation added by the dependent claim ** .

        Thus, for example, if claim 1 recites the combination of elements A, B, C, and D, a claim reciting the structure of claim 1 in which D was omitted or replaced by E would not be a proper dependent claim, even though it placed further limitations on the remaining elements or added still other elements.

        Examiners are reminded that a dependent claim is directed to a combination including everything recited in the base claim and what is recited in the dependent claim. It is this combination that must be compared with the prior art, exactly as if it were presented as one independent claim.

  3. I see a lot of claims like this in applications that originate in Europe. I’ve seen so many that I have assumed the form is acceptable, or even encouraged in Europe (maybe France in particular).

    Does anyone know if it is?

    1. Les, see comment 5 below.

      What I wonder do you mean by “like this”?

      It is common in Europe to have an independent claim that refers to another claim. Suppose for example, you have invented a new and improved biocompatible alloy NiTiXYZ. You claim it, in Claim 1.

      But you are apprehensive about patentability of the alloy per se. So you also claim:

      2. Stent made of the alloy of Claim 1

      3. Dental implant made from….

      4. Joint prosthesis made from…

      But I do not see this as excusing the form of claim that Dennis is highlighting here. Do you though?

      In the EPC, Article 84 commands that the claims must be “clear and concise”. See Rule 43 of the EPC for the “Form and Content” of claims allowable under the EPC. See Rule 44 for the unity of invention requirement.

      1. Max -

        By like this I mean:

        Claim 1 : A thing comprising:

        an A;
        a B;
        a C; and
        a D.

        Claim 16: A C of claim 1 comprising:

        an E;
        an F; and
        a G.

        I agree that your examples are not like this.

        1. Les,

          Since your example of claim 1 uses the term ‘comprising,’ does not claim 1 possibly include limitations of E, F and G among its family of possibilities? Would not the explicit call-out of such then in claim 16 be an appropriate dependent claim, as the items called out move from the realm of non-critical items in the universe of “comprising” to be critical items for the dependent claim?

          1. Anon -

            I’m not sure what the Europeans intended when they wrote claim 16.

            However, as I read claim 16 according to the U.S. rules and customs I was taught, claim 16 does not include elements A, B and D. So the answer to your question is no.

            1. Thanks Les – as I understand it the, the item of claim 16 is not associated with claim 1 from a dependency standpoint at all.

              The two claims stand on their own.

              Or do they..? Would you say that the C of claim 1 must be the same C of claim 16? If so, is this simply an ‘ordering’ issue (as in, claim 16 should proceed claim 1)?

            2. Anon -

              That is the question being discussed. Because it references claim 1, it looks like a dependent claim. However, because it begins with the indefinite article “A” and because it references only one element from claim 1, it appears to want to be an independent claim.

              I think the intention is to wrap the claimed C in the context of claim 1, almost as if claim 1 is to be interpreted as being in the preamble. But it just isn’t clear according to U.S. practice. Also, its not clear if that context is meant to be a limitation. That is, if someone makes C but doesn’t use it as called for in claim 1, are they infringing or not?

            3. Les,

              I was not clear enough: not only as you say immediately above, the scope fo the two claims almost indicates that the claim 16 is broader than the claim 1.

              Claim 1 appears to as if it could be a dependent claim of claim 16.

        2. OK Les. Now we need to clarify whether you see such claims in stuff filed at the EPO or stuff issued by the EPO, for what you show doesn’t meet EPO Rules and I therefore expect that you have seen it only in A (18 month, as filed) publications and not in B publications (ie examined applications maturing as granted EPO patents). As you might imagine, folks file at the EPO all sorts of stuff that gets tidied up during prosecution. For one thing, they don’t like incurring official EPO fees for excess pages or excess claims. For another, many of them are not very good at writing claims that are clear enough to satisfy the EPO.

          1. Max –
            Fair point. What I mean by “see” is I see national stage U.S. applications that have been filed based on original EPO or PCT filings.

            I understand that it could be that I am seeing the work of inexperienced practitioners. However, I asked my original question because of the frequency with which I see this form of claim, and well, because of the article herein above.

        3. In addition to what MaxDrei said, under the EPC the definition of what a dependent claim is based on a logical relation rather than on the wording on the claim itself: a dependent claim is defined as a claim containing all the features of another claim (Rule 43(4) EPC). Hence, the fact that a claim contains a reference to another claim does not make the former necessarily a dependent claim of the latter; for example, Claim 16 and Claim 1 in your example would be examined as two independent claims.

          What typically happens during prosecution is that a dependent claim drafted without any reference is reformulated by introducing a dependency to its “parent” claim and eliminating the common features, because Rule 43(4) explicitly requires so; on the other hand, an independent claim containing a reference to another claim is not necessarily objected, but it is more likely than not to present issues wrt Art. 84 (clarity), 82 (unity) or Rule 43(2) EPC (no more than one claim per category). This leads to the “cleaning up MaxDrei was referring to.

  4. Dennis,

    Thanks much for bringing up this intriguing and perplexing issue about Claim 12. This situation reminds me of the case of Wilson Sporting Goods where, under DOE, one or more of the dependent claims could be interpreted to cover (be infringed) by subject matter that wouldn’t be infringed by independent claim.

    As far as 35 USC 112(d) goes, what it specifies are two conjoint conditions for dependent claims: (1) reference to another claim; and (2) further limits the claim it refers to. So if a claim that refers to “another claim” fails to further limit that “another claim,” that doesn’t necessarily mean invalidity. Instead, that claim (like Claim 12 in Butamax) has to be an independent claim (by default). There may be question here of “indefiniteness” under 35 USC 112, 2nd paragraph, but in my opinion, there is no question of invalidity under 35 USC 112(d).

    1. Thanks EG for saying it clearly and bringing the appropriate quote from the statute. And I think you meant to say that in Wilson Sporting Goods “…one or more of the dependent claims could be interpreted to cover (be infringed) by subject matter that wouldn’t *infringe the* independent claim”

      1. Hey HJ,

        Thanks much for some appropriate “wordsmithing” on my thought on Wilson Sporting Goods. When that case came out, I almost had “gray matter meltdown” trying to comprehend what appeared at first blush to me to be a heretical view.

      2. Hey HJ,

        Please also note that Dennis has quoted only the beginning portion of Claim 12 from Butamax and that there is further characterizing/limiting language regarding that “recombinant yeast microorganism.” Even so, it’s still not a 35 USC 112(d) issue but one of whether the “recombinant yeast microorganism” is the unaltered or altered (e.g., due to the what happens in the method steps), and that’s a 35 USC 112, 2nd paragraph issue.

  5. “Because according to the claim it depends on the subject matter of another claim for its scope?” Exactly right. Both of the Venn diagrams in the post are correct only as long as the orange circles are made vanishingly small, which is the case here as there is no additional limitation recited in the dependent claim 12 beyond what is already in the independent claim 1.

    They wasted a dependent claim rather than skipping out on paying for an extra independent claim.

  6. It’s not a dependent claim. Can’t be, because claim 1 recites a method and claim 12 recites a composition of matter, although sometimes the troglodytes processing fees at the PTO don’t understand that and let it pass as a dependent claim for fee purposes. Apparently they meant to say “A recombinant yeast organism as recited in claim 1″, which is the lazy person’s way of saying “A recombinant yeast organism characterized by [the limitations of the yeast organism recited in claim 1]“. But it doesn’t say that, it’s just an invalid claim, period. Even if some judges mistakenly say otherwise.

    1. From MPEP 608.01(n), “II. TREATMENT OF IMPROPER DEPENDENT CLAIMS”

      The fact that the independent and dependent claims are in different statutory classes does not, in itself, render the latter improper. Thus, if claim 1 recites a specific product, a claim for the method of making the product of claim 1 in a particular manner would be a proper dependent claim since it could not be infringed without infringing claim 1. Similarly, if claim 1 recites a method of making a product, a claim for a product made by the method of claim 1 could be a proper dependent claim.

      1. Nice quote but inapposite, unless you adopt JSE’s view in comment 9 that the process of claim 1 also produces other yeast. In which case the claim that I think they meant to write, “12. A recombinant yeast organism as recited in claim 1.”, would fall under the scope of the second hypothetical from the MPEP. What that quote shows me is that the people who wrote the MPEP have a strange idea of what constitutes a dependent claim – they’re using the term to refer to any claim that refers back to an earlier claim; most of us use the term to refer to a claim directed to the X of a previous claim, with an additional limitation or three thrown in.

      2. Yeah, keep reading past your bolded part a7. There’s essentially a product by process exemption from the improper dependent claim objection or rejection (whichever the examiner issues, old school they did objections nowadays they do rejections, or are supposed to).

  7. Yes this should be considered an independent claim [and I hope they paid the fee for it?], and as to “product by process”claims, the old cases confusion has been clarified by more recent Fed. Cir. decisions, specifically:

    1. A product by process claim is only infringed by a product made by the claimed process. Abbott Labs v. Sandoz (Fed. Cir. 2009) (en banc)
    {Finally resolving a direct, express, inter-panel decisional conflict the CAFC left unresolved for years}

    2. A product by process claim is anticipated by an identical prior art product made by any process. SmithKline Beecham v. Apotex (Fed. Cir. 2006) [Consistent with earlier decisions.]

  8. This is exactly a product by process claim. You contact the yeast with a fermentation media containing a carbon substrate, and the yeast produces butanol as well as… other identical yeast. The pathways described in the method are all inherent properties of the yeast that will be produced.

    1. JSE – I may be off here, but my understanding of a product-by-process is that you are claiming the product that was made as a result of a novel process. Here, the yeast is not the result of the process but really the machinery used to create the product (butanol).

      1. Hi Dennis,

        It’s true that butanol is a byproduct of the yeast reproducing (much as ethanol is a byproduct of brewer’s yeast reproducing), but identical yeast organisms will still be produced by the method. This is certainly a tricky situation since it creates a chicken or the egg question, but I can see why this barely got any attention from the Federal Circuit.

        1. To make my point clearer: the novel step could very well be providing yeast that perform the substrate reactions recited by claim 1. In that case, both butanol and yeast would be products by a process containing the novel step of providing yeast with those properties.

    2. That’s clever, JSE, but you can’t tell from claim 12 whether it’s referring to the newly produced yeast or the yeast that’s input to the process, the latter of which is not a product by process. It’s indefinite.

  9. I think this would run afoul of claiming two statutory classes in one claim, see IPXL Holdings v. Amazon. Reviewing the prosecution history, it looks like an honest mistake. Claim 12 was originally drawn to the microorganism as such. As a result of a restriction, it was “withdrawn – currently amended.” However, it looks like the “method of claim [1]” language did not get inserted as it was for claim 14.

  10. However, Butamax’s dependent claim 12 here is broader (in some ways) than the referenced claim 1.

    It’s completely disjoint from claim 1, because claim 12 purports to be a composition of matter while claim 1 recites a method. It’s indefinite at least for the reasons you give.

    1. LB, agreed.

      Proper:
      1. Product by process using a recombinant yeast microorganism. 12. The product by process of claim 1 wherein the recombinant yeast microorganism further comprises:

      Another solution:

      Claim 12 as an independent claim:
      12. A composition comprising a recombinant yeast microorganism according to claim 1 wherein the recombinant yeast microorganism further comprises:

      May I suggest that claim 12 is not really a dependent claim, but an independent claim.

      1. With your second solution, which claim 1 are you referring to? In either case, in what way does the “according to claim 1″ limit the recombinant yeast microorganism. I think that claim is indefinite as well.

        1. LB, The form of claim is common, though. I’ve seen it a lot in issued patents.

          I count the claims as independent and I think the PTO does as well.

          1. “LB, The form of claim is common, though. I’ve seen it a lot in issued patents.”

            Exactly. Which is why we’ve been trying to stamp it out.

            “I count the claims as independent and I think the PTO does as well.”

            I’d be interested to know whom does that.

          2. Claim 12 was claim 96 during prosecution, which started out as an independent claim and then was amended to include the reference to claim 1. In Pfizer v. Ranbaxy, if I recall the facts of the case, the patentee described the disputed claim as a dependent claim by not paying for an independent claim. Here, based upon a quick review of the patent history, I did not see any place where the patentee treated the disputed claim as a dependent claim. So I am guessing the patentee would be ok under 112(d). (However, there were only two independent claims, so the patentee did not need to assert anything regarding dependent/independent.)

          3. Ned: The form of claim is common, though. I’ve seen it a lot in issued patents.

            I wouldn’t say it’s common. Not unheard of is more like it.

            The more common “mixed” claim form is the dependent method claim which uses “the composition of claim 1″ in one of the steps. For whatever reason, that form seems less indefinite to me but it’s still a claim format that should probably be avoided.

    2. “It’s completely disjoint from claim 1, because claim 12 purports to be a composition of matter while claim 1 recites a method.”

      That’s what I also say. It’s really just another way of saying that the depending claim doesn’t specify a further limitation of the subject matter in the parent though really.

    3. It’s indefinite at least for the reasons you give.

      Someone effed up. That isn’t a product-by-process claim by any stretch of the imagination. It’s just an improper dependent claim.

      It seems like a fixable problem. It is odd, however, that it hasn’t already been fixed.

  11. Although I counsel clients against this format, it is common in European patent claims, and is accepted by many patent examiners (including the examiner in this case).

    1. Dennis wrote:

      “Claim 1 is directed to a “method for producing isobutanol” that uses the “recombinant yeast microorganism.” Claim 12 is directed to “The recombinant yeast microorganism of claim 1.”

      and my curiosity was aroused by SJE’s reply:

      “….this format, it is common in European patent claims,….”

      because I cannot recall ever having seen it. Can SJE say more?

      Also in Europe, when a claim in a set of consecutively numbered claims includes a reference to a claim with a lower number, there can be opposed views on the issue whether the claim is properly designated a”dependent” or an “independent” claim. But dependent or independent, who cares? It doesn’t matter in Europe, because it makes no difference to claim construction or claims fees.

      Setting aside the important issue of fees due, what difference does it make, in the USA?

      1. The difference it makes in the US is that claims that reference another claim are considered dependent. Also, dependent claims are required to be narrower than the claim from which they depend.

        The third issue, as pointed out in the article, is that since dependent claims are narrowing, if the independent claim is allowed, the dependent claims are barely considered by the examiner. This is against the rules, but common practice.

        1. To Les’s “This is against the rules, but common practice” I am reminded (tangentially) of a certain similar set of Venn diagrams for coverage of 102 and 103.

        2. It is permissible to “refer” to another claim merely for shorthand/context – and NOT for dependency.

          However, it’s safest to make sure any fees paid are consistent with this.

          Perhaps it’s also best to say in the preamble, “without being dependent upon said claim” or some such.

            1. I quite agree, but doing it non-best shouldn’t be construed as somehow being a botched attempt at a dependent claim (when no dependency was either sought or indicated).

            2. I came into this conversation in the middle. I’m not sure if you are talking about a hypothetical claim or the one in the article.

              In any event, what would it mean for a claim to refer to the context of another claim? Is the context a limitation to the referring claim? If not, they why mention it. If it is, then the referring claim is meant to be a dependent claim.

            3. Les, in answer to your question, no it is not meant to be limiting. But as for your other question of why mention it, there are times when the context is useful because there is some relationship between the separate items being claimed.

              In some cases, it’s ironically to aid with establishing the *opposite* of dependency or such subset status – i.e., mutual exclusivity. (For example, imagine a negative limitation in claim Y stating that a given claim or element thereof must NOT comprise the item of claim X.)

      2. A few weeks ago I saw this sort of claim language and the client was irritated when I corrected it. They pointed out that they had already gotten similar types of claims allowed in the USA and Europe

        For obvious reasons, I certainly cannot give you a copy of anything associated with a client.

  12. There are only two reasons to phrase your product-by-process claim that way: one, you and/or your staff are too lazy to copy and paste; and two, because you feel like stiffing the PTO for the independent claim fees.

  13. How would 112(d) work for a claim that includes a selection from a Markush group (no snark)? Especially if the claim does not have a “one or more of… and/or… ” style format.

    Clearly, such a group could not reasonably have “all limitations” apply at once.

    1. Clearly, such a group could not reasonably have “all limitations” apply at once.

      Clearly it could (no snark), if you’re reading the limitations properly. The individual items in the Markush group aren’t limitations, since you can infringe without having any particular one of those items. The Markush recitation as a whole is a limitation, and doesn’t necessarily present any particular problems with 112(d). Where it gets weird (and potentially indefinite) is when a parent claim has a Markush group and a dependent claim modifies one (or only a subset) of the items in the group.

      1. Leopold,

        I do not understand your comment of “The individual items in the Markush group aren’t limitations, since you can infringe without having any particular one of those items

        On the contrary, the individual items in the Markush group are expressly limitations.

        Your comment on ‘where it gets weird’ is just a repeat of my question.

        1. I do not understand your comment of “The individual items in the Markush group aren’t limitations, since you can infringe without having any particular one of those items.”
          On the contrary, the individual items in the Markush group are expressly limitations.

          1. An apparatus comprising A and an item selected from the group consisting of B, C, and D.

          B, individually, is not a limitation all by itself, since the claim can be infringed by an apparatus that doesn’t include B. The whole phrase “item selected … B, C, and D” is a limitation.

          Your comment on ‘where it gets weird’ is just a repeat of my question.

          Sorry. All I meant to say is that there is not necessarily a problem with depending from a Markush claim:

          2. The apparatus of claim 1, further comprising E.

          3. The apparatus of claim 1, wherein A has a diameter of less than 4 inches.

          1. Still not understanding you Leopold.

            To wit: “B, individually, is not a limitation all by itself” is simply not true.

            B is a limitation all by itself. It is not the only limitation to be sure, but that does not make it “not a limitation.”

            Maybe you are confusing yourself with trying to to read an infringement (of the claim as a whole) instead of focusing on what a limitation is.

            And of course, there may be a “not necessarily a problem” but that is the non-interesting possibility. You have now moved away from what I actually posted to cover a non-issue. Move the goalposts back and address what I actually posted upon.

            1. B is a limitation all by itself. It is not the only limitation to be sure, but that does not make it “not a limitation.”

              If you want to define limitation in such a way that (a) it includes features that don’t necessarily appear in every instance of the claimed method, apparatus, etc., and (b) renders the long-standing use of Markush claims incompatible with the long-standing language of Section 112, then feel free.

          2. What about this variation:
            1. An apparatus comprising A and a widget selected from the group consisting of B, C, and D.
            2. The apparatus of claim 1, wherein the widget is B.
            3. The apparatus of claim 2, wherein C has a diameter of less than 4 inches.

            Is claim 3 valid under 112(d)? Is it indefinite? Does claim 3 require A, B and C?

            1. Is claim 3 valid under 112(d)? Is it indefinite? Does claim 3 require A, B and C?

              In my view it is, and an examiner should at least object to it. It’s probably not “insolubly ambiguous,” though, so a court is likely to read it as requiring A, B, and C.

            2. 1. An apparatus comprising A and a widget selected from the group consisting of B, C, and D.
              2. The apparatus of claim 1, wherein the widget is B.
              3. The apparatus of claim 2, wherein C has a diameter of less than 4 inches.

              Is claim 3 valid under 112(d)? Is it indefinite?

              I would say so. Your follow up question (“Does claim 3 require A, B and C?”) illustrates the problem. The reader is forced to ask whether they are reading some very poorly worded claim or whether there is a mistake in claim 2 or 3.

              And the fact that it’s a “solveable” problem (e.g., a judge could answer your follow up question “yes” or “no” and thereby “solve” the problem) shows why the Supreme Court is going to give the Federal Circuit another well-deserved spanking.

            3. Claim 3 is fine. Only someone being intentionally obtuse would be confused by it. If the size of C is being specified, clearly an embodiment that includes C is being claimed. Claim 1 refers to A (singular) widget. Clearly A and B are not required.

            4. …shows why the Supreme Court is going to give the Federal Circuit another well-deserved spanking.

              I think you might be right, MM. I don’t think logical consistency within a claim or set of claims and clarity about the relationship between the elements of a claim is too much to ask from patent professionals.

            5. Clearly A and B are not required.

              You do realize that claim 3 depends from claim 2?

              I missed that tidbit the first time I read through the hypo. It’s sort of important.

            6. Sorry, Les — my comment came around the far side of the barn while you were on the near side.

              Looks like we all see the problem. Probably a fixable problem. Fixable with a certificate of correction? Possibly depends on what fix you have in mind …

            7. MJM,

              Consider your claim 3 but instead of C narrowed, you have the recitation of B narrowed.

              Does claim 3 (as apparently required) capture ALL the possible limitations of claim 1?

              Can any sub-dependent claim that depends from a claim that features non-completely-overlapping alternatives pass 112(d)?

  14. “In my mind, the Butamax claim structure does not fit within the structure authorized by §112(d) because the full effect of the “method” limitation is not included in the dependent composition claim.”

    Also there is no further limitation on the subject matter previously claimed. Claim 12 adds no further limitation to the method subject matter in claim 1. But then the proponents of such nonsensical claim drafting will howl that the claim is an INDEPENDENT claim. Apparently they’re not really familiar with what the term “independent” means. And when confronted with the fact that the claim is in fact connected with another claim then their protestations eventually die down.

    “Now, this claim form is similar to that used in product-by-process claims where a dependent product-by-process claim references the process described in a process claim. That type of claim has been accepted by the Federal Circuit on several occasions See Scripps Clinic & Research Found. v. Genentec, Inc. (Fed. Cir. 1991) (“product by process claims are not limited to product prepared by the process set forth in the claims”).”

    Which is why it falls to the PTO to object to such claims before they escape into the wild “presumed valid” land.

    “In his treatise, Don Chisum has an entire section on product-by-process claims (Section 8.05). Chisum highlights the fact that the proper scope of a product-by-process claim is unclear.”

    Well he’s wrong about that. People on the ground are very clear about the scope of such a claim in the PTO, and in litigation.

    1. Chisum highlights the fact that the proper scope of a product-by-process claim is unclear.”

      Surely that’s an out-of-date citation. As someone pointed out upthread, the Federal Circuit did a pretty good job of cleaning up that particular mess in Abbott v. Sandoz (no idea why it took them so long — reminds me of some other messes…).

        1. Reminds me – Malcolm never did answer the question I posed as to Chisum…

          Just like Ned never reviewed what Chisum had to say about patents as mere personal property, and the lack of explicit patent law detailing (like Railroad or military law) how that personal property is to be controlled vis a vis state law.

          Funny, how making a reference to a well-known patent law authority results in silence from my naysayers…

  15. It’s just an improper depending claim that in this case goes one step further than most such claims do to show why such claims are improper. These claims are so much unusual as they are dying out. For awhile there the trend was that these claims were starting to become the norm. Only after the office began to push back at the insistence of some did the trend seem to abate to some extent.

    Of course I’m only able to use my cases as a small sample of the overall drafting performed over this time period, but it appears that such is dying out slowly as more examiners are informed of the need to shoot these claims down.

    1. 6, why not just count them as independent claims because one is changing from a system or apparatus or method to another class entirely?

      1. “why not just count them as independent claims because one is changing from a system or apparatus or method to another class entirely?”

        1. Because according to the claim it depends on the subject matter of another claim for its scope?

        2. Also as in my other comment: ” But then the proponents of such nonsensical claim drafting will howl that the claim is an INDEPENDENT claim. Apparently they’re not really familiar with what the term “independent” means. And when confronted with the fact that the claim is in fact connected with another claim then their protestations eventually die down.” In other words, you need to learn what the word “independent” means before using it to describe a claim.

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