Multiplicity

37 CFR 1.75  Claim(s).

(a) The specification must conclude with a claim particularly

pointing out and distinctly claiming the subject matter which the applicant

regards as his invention or discovery.

(b) More than one claim may be presented provided they differ

substantially from each other and are not unduly multiplied.

*****

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(b)

or

pre-AIA 35

U.S.C. 112

, second paragraph, may be appropriate. As noted by

the court in

In re Chandler,

319 F.2d 211, 225, 138 USPQ 138, 148

(CCPA 1963), “applicants should be allowed reasonable latitude in stating their

claims in regard to number and phraseology employed. The right of applicants to

freedom of choice in selecting phraseology which truly points out and defines their

inventions should not be abridged. Such latitude, however, should not be extended to

sanction that degree of repetition and multiplicity which beclouds definition in a

maze of confusion. The rule of reason should be practiced and applied on the basis of

the relevant facts and circumstances in each individual case.” See also

In

re Flint,

411 F.2d 1353, 1357, 162 USPQ 228, 231 (CCPA 1969). Undue

multiplicity rejections based on

35 U.S.C. 112(b)

or

pre-AIA 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(b)

or

pre-AIA 35 U.S.C. 112

, second

paragraph, is appropriate, the examiner should contact applicant by telephone

explaining that the claims are unduly multiplied and will be rejected under

35

U.S.C. 112(b)

or

pre-AIA 35 U.S.C. 112

, second

paragraph. Note

MPEP §

408

. The examiner should also request that applicant select

a specified number of claims for purpose of examination

nder

35 U.S.C.

112(b)

or

pre-AIA 35 U.S.C. 112

, second

paragraph, is appropriate, the examiner should contact applicant by telephone

explaining that the claims are unduly multiplied and will be rejected under

35

U.S.C. 112(b)

or

pre-AIA 35 U.S.C. 112

, second

paragraph. Note

MPEP §

408

. 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(b)

or

pre-AIA 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(b)

or

pre-AIA 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 Patent Trial and Appeal Board.

Also, it is possible to reject one claim over an allowed claim if

they differ only by subject matter old in the art. This ground of rejection is set

forth in

Ex parte

Whitelaw,

1915 C.D. 18, 219 O.G. 1237 (Comm’r Pat. 1914). The

Ex parte

Whitelaw

doctrine is restricted to cases where the claims are

unduly multiplied or are substantial duplicates.

Ex parte Kochan,

131 USPQ 204, 206 (Bd. App. 1961).