Navigating Uncharted Waters: Evaluating Patentability in Multiple Dependent Claims
Nested Bean, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting inter partes review of claims 1-18 of U.S. Patent No. 9,179,711 B2 (Ex. 1001, “the ‘711 patent”). Claims 1 and 2 of the ‘711 patent are independent, and claims 3-16 are multiple dependent claims that directly or indirectly reference and depend on either independent claim 1 or claim 2. For instance, claim 3 recites “[a] swaddling suit according to claim 1 or 2” in relevant part. The Board instituted a review of claims 1-18 of the ‘711 patent.
According to the Board’s Final Written Decision, Petitioner was unable to prove that independent claim 1 was unpatentable, but they were able to demonstrate that independent claim 2 was unpatentable. The Board evaluated the patentability of multiple dependent claims 3-16 and found that these claims depend on either claim 1 or claim 2. Therefore, if any version of claims 3-16 (depending on either claim 1 or claim 2) is described in the prior art, then both versions of claims 3-16 are anticipated or rendered obvious. Accordingly, the Board determined both versions of claims 3– 16, i.e., the first version depending from claim 1 and the second version depending from claim 2, were shown to be unpatentable because the second version depended from independent claim 2, which was shown to be unpatentable.
On February 23, 2022, Patent Owner filed a Request for Director review. In the request, the Patent Owner contended that the Board made an error by not individually evaluating the patentability of claims 3-16 as dependent on independent claim 1, which was not proved to be unpatentable.
It was observed by the Director that based on the analysis of Federal Circuit, district court, and Board precedent, no court has directly dealt with the interpretative problem raised in this case. This issue pertains to whether the Board is required to assess separately the patentability of each limitation incorporated by reference into a multiple dependent claim.
According to the USPTO Director, the unambiguous language of the fifth paragraph of 35 U.S.C. § 112, along with the phrasing in 35 U.S.C. § 282 and 37 C.F.R. § 1.75(c), supports an interpretation that necessitates separate examination of the patentability of each dependency in a multiple dependent claim. Additionally, the Director highlighted that this interpretation aligns with longstanding guidance outlined in MPEP (Manual of Patent Examining Procedure) § 608.01(n)(I)(B)(4). This section advises practitioners and examiners that a multiple dependent claim does not comprise all limitations of every alternative claim it refers to, but instead encompasses only those restrictions specific to the embodiment being analyzed. Furthermore, this section instructs examiners to evaluate a multiple dependent claim in the same manner as they would assess several single dependent claims.
Accordingly, the Director concluded that the Board made a mistake in its evaluation of claims 3-16, which are multiple dependent claims. The Board failed to assess separately that these claims incorporate the limitations of claim 1 by reference, and claim 1 was not found to be unpatentable. Therefore, claims 3-6 depending from claim 1 are also not unpatentable.