BitLaw

2173.05(f)    Reference to Limitations in Another Claim [R-11.2013]

A claim which makes reference to a preceding claim to define a limitation is an acceptable claim construction which should not necessarily be rejected as improper or confusing under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. For example, claims which read: "The product produced by the method of claim 1." or "A method of producing ethanol comprising contacting amylose with the culture of claim 1 under the following conditions....." are not indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, merely because of the reference to another claim. See also Ex parte Porter, 25 USPQ2d 1144 (Bd. Pat. App. & Inter. 1992) (where reference to "the nozzle of claim 7" in a method claim was held to comply with 35 U.S.C. 112, second paragraph). However, where the format of making reference to limitations recited in another claim results in confusion, then a rejection would be proper under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.

When examining a dependent claim, the examiner should also determine whether the claim complies with 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, fourth paragraph. See MPEP § 608.01(n), subsection III.