規劃的附屬項適當不適當，可以用侵權的角度來判斷
以下為MPEP 中對a
proper dependent claim 之規定，供大家參考。
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608.01(n) Dependent Claims
INFRINGEMENT TESTThe 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.
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.
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.
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.
CASE 1:
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.
CASE 2:
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.
CASE 3:
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.
中文整理如下：
好的附屬項是：
1. 不能使侵權物侵害附屬項而沒有侵害主要項
2. 要符合112第四段所規範的要求
3. 不能產生不同於所依附項的範疇，如所依附項為A,B,C,D，附屬項不能為A,B,C,E
4. 相對於習知技術仍視為一獨立項的解釋
5. 可為需要另外檢索條件的另一發明
6. 雖然可能被限制性要求，但仍可為另一種類別(class)的申請專利範圍
7. 如Claim 1為一產品，而其附屬項為該產品的製造方法，雖然可能造成附屬項被侵權而被依附項沒有被侵權，但仍OK
8. 同理，若Claim 1為製造方法，其附屬項為該製造方法產生的產品，依然OK
9. 但是，如果上述之產品可被其他方法製造，即附屬項可能被侵害而Claim 1未被侵害，上述的附屬項就不適當
Ron
