Director Vidal Issues a Precedential Director Review Decision Regarding the Treatment of Multiple Dependent Claims

On February 24, 2023, in the case Nested Bean v. Big Beings, USPTO Director Vidal issued a precedential decision of first impression regarding the treatment of multiple dependent claims in an Inter Partes Review proceeding before the Patent Trial and Appeal Board. In this decision, Director Vidal interprets the language of the fifth paragraph of 35 U.S.C. § 112 (pre-AIA) based on its plain language, the language from 35 U.S.C. § 282 and 37 C.F.R. § 1.75(c), long standing MPEP guidance, and on an extensive review of prior court decisions.   Director Vidal concludes that the statute requires separate consideration of the patentability of alternative dependencies of a multiple dependent claim.  In other words, when considering the patentability of a multiple dependent claim, the PTAB must consider separately the limitations of each claim incorporated by reference into the multiple dependent claim.  Of note, paragraph (e) of 35 U.S.C. § 112 (AIA) recites the same language of interest such that the same conclusion would be expected for patents issued under the AIA.  The decision can be read here.