Legal Definitions - undue-multiplicity-of-claims rejection

An undue-multiplicity-of-claims rejection occurs in patent law when a patent examiner determines that an application contains an excessively large number of claims, or claims that are so numerous and repetitive, that they make it unreasonably difficult to understand and properly examine the scope of the claimed invention. This type of rejection is issued when the sheer volume or redundancy of claims obstructs the examiner's ability to perform a thorough and efficient review, or makes the boundaries of the invention unclear to the public.

Here are some examples illustrating an undue-multiplicity-of-claims rejection:

• Example 1: Overly Detailed and Repetitive Claims for a Simple Device

  An inventor files a patent application for a new type of bottle opener. Instead of presenting a concise set of claims covering the unique mechanism, the application includes 120 claims. Many of these claims differ only by minor, insignificant details, such as "a bottle opener wherein the handle is made of plastic," "a bottle opener wherein the handle is made of metal," "a bottle opener wherein the handle is textured," "a bottle opener wherein the handle is smooth," and "a bottle opener with a red handle."

  How it illustrates the term: The patent examiner would likely issue an undue-multiplicity-of-claims rejection because the vast number of claims, many being redundant or describing trivial variations, makes it extremely difficult to discern the actual innovative aspects of the bottle opener and to conduct an efficient search for prior art. The examiner cannot reasonably be expected to evaluate each minute variation.

• Example 2: Excessive Claims Covering Disparate Features

  A company invents a novel type of adhesive tape. Their patent application includes 90 claims. Some claims describe the chemical composition of the adhesive, others describe the material of the tape backing, and then a large number of claims describe various *dispenser designs* for the tape (e.g., "a dispenser with a serrated edge," "a dispenser with a smooth cutting blade," "a dispenser with a built-in pen holder"), and even claims for *packaging materials* for the tape rolls.

  How it illustrates the term: This application would likely receive an undue-multiplicity-of-claims rejection because the claims cover a wide array of distinct subject matters (adhesive composition, tape backing, dispenser designs, packaging) in an excessive and unorganized manner. This makes it impossible for the examiner to focus on a single inventive concept and properly assess patentability across such disparate and numerous areas.

• Example 3: Proliferation of Dependent Claims with Minor Differences

  An inventor develops a new type of ergonomic computer mouse. The application has a main independent claim for the mouse's core design. However, instead of having a few dependent claims that add significant, distinct features, the inventor includes 85 dependent claims, each adding a tiny, often obvious, detail. For instance, "The mouse of claim 1, wherein the scroll wheel is black," "The mouse of claim 1, wherein the scroll wheel is gray," "The mouse of claim 1, wherein the scroll wheel is textured," "The mouse of claim 1, wherein the mouse has two buttons," "The mouse of claim 1, wherein the mouse has three buttons," and so on.

  How it illustrates the term: The examiner would issue an undue-multiplicity-of-claims rejection. While dependent claims are allowed and useful for defining specific embodiments, an excessive number that merely list trivial variations or obvious alternatives, as seen here, creates an unreasonable burden on the examiner and obscures the true scope of the invention. It makes it difficult to understand what the applicant truly considers novel and non-obvious beyond the main claim.