About claims XII - INFRINGEMENT TEST

在MPEP Section 608.01(n), Dependent Claims中提及有關附屬項的侵權測試，如果通過測試，表示此附屬項至少形式上是合適的

原文：
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.

(沒有侵害主要項，也不會侵害附屬項)

A dependent claim does not lack compliance with 35 U.S.C. 112, fourth paragraph, simply because there is a question as to (1) the significance of the further limitation added by the dependent claim, or (2) whether the further limitation in fact changes the scope of the dependent claim from that of the claim from which it depends. The test for a proper dependent claim under the fourth paragraph of 35 U.S.C. 112 is whether the dependent claim includes every limitation of the claim from which it depends. The test is not one of whether the claims differ in scope.

(附屬項的範圍包含了它所依附的項次的所有限制)

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.

(取代式的附屬項為不適當的)

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.

(附屬項的範圍解讀如同獨立項，審查時要逐條審查)

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.

(附屬項可能是不同於被依附項的實施例，亦可能遭受限制性要求，且需要不同於被依附項的檢索條件或是類別，但並非是不合適的附屬項)

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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.

(若沒有侵害被依附項(Claim 1)，而此附屬項亦不被侵害時，如果被依附項(Claim 1)是指向一個特定的產品，而製作該產品的方法仍為一個適合的附屬項；反之亦然，在同樣前提下，如果被依附項是一個方法，而其附屬項是該方法製作的產品，同樣為合適的附屬項)

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.

(參考所舉之例子，Claim 1為方法，而附屬項是以此方法所做的產品，若此產品可非由此方法製作，造成附屬項的產品被侵權，而所依附的方法項(Claim 1)可能沒有被侵權，這就不是合適的附屬項)

所以：
以侵權的角度來測試，可以得到被依附項與依附項的關係是否適當！但多半時候，方法與裝置的範圍相互依附是不好的！

Ron