Multiplicity of 900 claims (phone applicant and select claims)

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I recall the multiplicity question being related to a non-provisional App w/ one utility claim

and more than 900 claims covering small ornamental differences. Indeed, that question’s answer

involved an examiner calling the applicant by phone w/ suggestion that the applicant select a

few claims for examination.


Multiplicity question – applicant has one utility claim and more than 900 claims covering small

ornamental differences. Answer is that the examiner should call the applicant and have him select

a few claims for examination.


MPEP 2173.05(n), Specific Topics Related to Issues Under 35 U.S.C.
If a rejection on multiplicity is in order the examiner should make a telephone call explaining
that the claims are unduly multiplied and will be rejected on that ground. Note MPEP Section 408.
The examiner should request selection of a specified number of claims for purposes of examination.



I think the two part broom handle question to which you are referring might be the question about

the application containing some ridiculous number of claims, like I think 900 or so. It has to do

with multiplicity. I haven’t seen it on an exam, but I have seen it referred to on the boards. I

think the correct answer has to do with the examiner calling the practitioner and asking for the

claims to be reduced. There is also another part to the correct response but I cannot recall it

at this time. Just read the section on multiplicity. I don’t think it is too long.

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