I have a patent application with 45 claims, one independent claim. Some of the claims are for explanation. As an example, the first claim includes:

determining x from y; and

processing x.

Some of the dependent claim are:

  • said determining is based on a.
  • said processing comprises x performing l.

In order to reduce the number of claims I thought about something this:

Claim 1: determining x from y, wherein determining x is based on one or more of: a, b or c; and

processing x, wherein processing x comprises performing one of l, m or n.

Is that reasonable?

  • 1
    Writing a reasonable patent application specification is a skill and an art - writing good claims is very very hard and a moving target. The books I had on claims (now retired) took up about three feet of shelf space and were partly made obsolete with each SCOTUS patent case and some CAFC cases.
    – George White
    Aug 17, 2021 at 0:26
  • You can just incorporate dependent claims in you independent or just neglect them. Claims are not used for explanation. The specifications suffice for this purpose. Basic considerations for dependent claims to allow an examiner to "limit" the independent claim by requesting incorporation of some of them into the independent.
    – Moti
    Aug 20, 2021 at 6:05

1 Answer 1


If this is a U.S. application I would consider more than one independent claim. It is often a good idea to come at the invention from a different perspective in a second independent claim.

Claims are not for "explanation" but for definition of the boundaries of the invention. An exception can be in the case that your independent claims sound a little abstract or convoluted. It can help to have a "picture claim" as the first claim, by way of explanation. Examiners often skip right to the claims before reading the spec. and a picture claim can be helpful in some cases. There is no rule that claim 1 needs to be broader than subsequent claims.

Be very careful about the use of "or" and "and". You probably mean ". . . determining x is based on one or more of: a, b and c . . ." Meaning that the set of things that at least one of which is included is the set consisting of a and b and c. The MPEP examples of proper use is

"a material selected from the group consisting of A, B, and C" or "wherein the material is A, B, or C")"

Having a sets of possible things that a claim covers means that if prior art is found, now or later, that includes one of those things the claim will be unenforceable.

One approach to consider is to have some of the claim wording appear as part of the specification rather than as actual claims. "An aspect of the inventions is determining x from y, wherein determining x is based on one or more of: a, b or c; and processing x, wherein processing x comprises performing one of l, m or n."

This assures that a later introduction of that wording in an amendment claim set or in a continuation application will not be seen as new matter. This can be particularly important in applications that might someday be filed as EPO claims.

  • @George Thanks. By "explanation" I meant that I want to "explain" to the examiner so he/she wouldn't interpreted "processing" in the broadest possible way. Guess I'll move it to the specification.
    – nmnir
    Aug 17, 2021 at 10:00
  • @EricS There are times when I wonder why do people comment toxic comments here. Does it help them fill better about them self's?
    – nmnir
    Aug 17, 2021 at 10:01
  • @nmnir I’m sorry you took my comment like that. My apologies. Writing patents is hard. Writing effective patents without the assistance of a qualified attorney or agent is unlikely. This is simply reality in my experience.
    – Eric S
    Aug 17, 2021 at 13:12
  • If explaining means defining the boundaries of a claim’s scope, it does belong in that claim. Being narrow in the specification narrows all claims in a way that is hard to fix. But defining terms - done carefully - does belong in the specification.
    – George White
    Aug 17, 2021 at 13:52
  • Some practice is to start with the claims and than write the specifications around them. I personally prefer (started recently) starting with drawing/specifications and than write claims and returning to the specification and wording the claims into the specifications with a specific drawing for the independent claims.
    – Moti
    Aug 20, 2021 at 6:10

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