Receive e-mail updates for new posts!

Antecedent Basis is not the Sole Standard for Supporting Claimed Subject Matter


Sometimes, Examiners object to certain claimed features as lacking antecedent support in the specification, generally pointing to MPEP § 608.01(o). However, as discussed in MPEP § 608.01(g), antecedent basis is not the sole standard for supporting claimed subject matter. Rather, all that is required is clear support. For example, in the author's opinion, if you have an electronic device such as a computer, cell phone or the like in the specification, features such as a processor and memory are clearly present for practical implementations even if not explicitly described (implementing the entire system with hardware alone would be extremely expensive, inflexible and impractical). If a software invention with respect to these devices is discussed in the specification, but no underlying hardware components are explicitly disclosed, it is nonetheless clear to one of ordinary skill in the art that such hardware components are present due to the presence of a computer, cell phone or the like. When such an objection occurs, and a feature is clearly supported by the specification, arguments along the lines of the following may be useful to overcome the objection.

Example Argument

On page [PAGE NUMBER] of the Office Action, the Examiner objected to the specification as allegedly “failing to provide proper antecedent basis for the claimed subject matter.” More specifically, the Office Action stated that “[c]laim X relates to a [FEATURE], however, there is no support for the [FEATURE].” Applicant respectfully submits that the objection is improper.

MPEP § 608.01(g) states that the detailed description “should provide clear support or antecedent basis for the claims” (emphasis added). As such, there is no strict requirement that verbatim antecedent support for claim recitations (i.e., the same exact words) be provided in the specification. Rather, it is sufficient that the claimed features be clearly supported by the specification. In the present case, the Office Action alleged that there is no support for [FEATURE]. However, Fig. X and the associated description thereof on pages [PAGE NUMBERS] of the present application discuss [SUPPORT FOR FEATURE]. [OTHER ARGUMENTS PERTAINING TO WHY FEATURE IS CLEARLY SUPPORTED HERE]. As such, Applicant respectfully submits that a person of ordinary skill in the art would readily appreciate that [FEATURE] is clearly supported by the present specification.

Accordingly, it is respectfully submitted that the rejection is overcome and respectfully requested that the rejection be withdrawn.