Broadening an independent claim using depending claims

Question

I have an independent claim like this.

1. An X comprising:
   ...
    wherein the animal is at least one of:
         a cat,
         a dog,
         a lion not found in a brazilian zoo, and
         a mouse.

Here I completely ignored the brazilian zoo to narrow my claims over a prior art.

I would like to focus on the limitations related to the brazilian zoo. Can I construct dependent claims like this?

2. The X of Claim 1, wherein the animal is a lion found in the brazilian zoo, wherein the lion has 3 legs.

The X of Claim 1, wherein the animal is a lion found in the brazilian zoo, wherein the lion is blind.

I'm confused here because I already narrowed claim using the words "not found". So can I use the dependent claim to make the claim broad?

George White · Accepted Answer · 2020-10-22T22:39:40.277

NO

A dependent claim, by definition, is a narrowing of the claim from which it depends. The independent claim could just have "a lion" and a dependent claim could say, "where the lion is found [or not found] in a Brazilian zoo.

Separately, in your example, if "not found in a brazilian zoo" is needed to get around prior art, then a broadening of it would not get around the prior art. Also I do not understand the claim wording achieving the goal of ignoring of Brazilian zoos. Requiring the zoo not to be Brazilian is not ignoring them.

score 2 · Answer 2 · answered Oct 22 '20 at 21:26

George White's response is correct. I just want to add a couple remarks. Some jurisdictions enforce the Doctrine of claim differentiation (the US and Germany at least), some others do too but in a lesser degree. Many examiners tend to skim the dependent claims to see if they spot something out of place once the independent claims are deemed to be allowable, this leads to two possible situations:

Dependent claims not adding anything to the claim they depend upon. The claim scopes are exactly the same.
Dependent claims define a scope different than that of the claim they depend upon. In other words, the scope is not completely contained within the scope of the claim they depend upon, which is the case you mention.

The second scenario happens sometimes, either because the applicant overlooked the amendments to be made (the previous claims were amended during prosecution but their depending claims were not amended accordingly), or because the applicant intentionally attempts to get additional scope of protection (the claim uses wording to sort of undo the features of the previous claims and add new ones). In these situations, one never knows whether those claims are really enforceable and how they will be considered in a trial because a fair question is whether that claim was really examined by the patent office in the first place. Another fair question would be how on Earth one does not infringe the subject-matter of an independent claim but infringes that of a dependent claim.

I guess such dependent claims are not welcome by the patent offices, the thing is the examiners go pretty quick over these claims. Should the EPO see a dependent claim not falling within the scope of the former claim, the claim will get objected to on the grounds of lack of clarity, and if the claim simply does not anything to the claim it depends upon it should be objected to on the grounds of lack of conciseness, which is the same article (Art. 84 EPC).

Another way to look at "not adding anything [any limitation] to the claim" is not subtracting any scope from the claim it depends from. — George White, Oct 22 '20 at 22:39

Broadening an independent claim using depending claims

2 Answers2