Appeal No. 96-3157 Page 12
Application 08/088,136
The fourth paragraph of section 112 of title 35, United
States Code, provides:
Subject to the following paragraph, a claim in dependent
form shall contain a reference to a claim previously set
forth and then specify a further limitation of the
subject matter claimed. A claim in dependent form shall
be construed to incorporate by reference all the
limitations of the claim to which it refers.
The examiner determined (answer, p. 10) that dependent
claims 20 and 21 were directed to preparing and delivering the
meal to the customer and fail to define any further method
steps for making an individual restaurant menu.
We agree with the appellant that claims 20 and 21 are
proper dependent claims under the fourth paragraph of 35
U.S.C. § 112. We consider a claim that incorporates by
reference all of the subject matter of another claim, that is,
the claim is not broader in any respect, to be in compliance
with the fourth paragraph of 35 U.S.C. § 112. See Ex parte
Porter, 25 USPQ2d 1144 (Bd. Pat. App. & Int. 1992) and Ex
parte Moelands, 3 USPQ2d 1474 ((Bd. Pat. App. & Int. 1987).
Thus, there is nothing per se wrong with adding processing
steps as in claim 20 or defining the output device as a
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