147 claims

50. Ben hires a registered practitioner to prosecute his patent application. The practitioner

drafted an application having fifteen claims. Claim 1 is independent, and each of claims 2-15 are

singularly dependent upon claim 1. A proper non-final Office action is mailed to the

practitioner. Following consultation with Ben, the practitioner timely prepared, signed, and filed

a reply to the Office action containing an amendment that does not add new matter, but does add

claims 16-27. Each of claims 16-27 is directed to the same invention sought to be patented

through claims 1-15. The dependency of each of claims 16-27 reads “any of claims 5-15.” For

purposes of fee calculation in accordance with the patent laws, rules and procedures as related in

the MPEP, how many total claims are contained in the application after the amendment is

entered?

(A) One hundred thirty-six.

(B) One hundred thirty-five.

(C) Twenty-seven.

(D) One hundred forty-seven.

(E) Fifteen.

50. ANSWER: (D) is the most correct answer. 37 CFR § 1.75; MPEP § 608.01(n). As

explained in MPEP § 608.01(n), under the heading “Multiple Dependent Claims,” subheading

“Acceptable Multiple Dependent Claim Wording” the multiple dependent claim wording of new

claims 16-27 is proper. See, for example, “any one of the preceding claims,” and “in any of

claims 1-3 or 7-9.” 37 CFR § 1.75(c) states “For fee calculation purposes under § 1.16, a

multiple dependent claim will be considered to be that number of claims to which direct

reference is made therein.” Therefore, claims 16-27 would each have a claim value of eleven

and the total number of claims for fee calculation is one hundred forty-seven (12 x 11 = 132 + 15

= 147). Answers (A) and (B) are incorrect because they are not the correct total. Answer (C) is

incorrect because the multiple dependent claims have not been calculated in accordance with 37

CFR § 1.75. Answer (E) is incorrect because the question asks for the total after the amendment

adding claims 16-27 has been entered.