Can a lack of antecedent basis be overcome during patent prosecution?
Can a lack of antecedent basis be overcome during patent prosecution?
Yes, a lack of antecedent basis can often be overcome during patent prosecution. The MPEP 2173.05(e) provides guidance on this matter:
“A claim is not per se indefinite if the body of the claim recites additional elements which do not appear in the preamble. Such a claim construction is not required where ‘a and b’ are part of one element and the preamble gives antecedent basis for only one of a and b.”
This implies that examiners should consider the claim as a whole and not automatically reject claims for lack of antecedent basis. During prosecution, applicants can often overcome such rejections by:
- Amending the claims to provide proper antecedent basis
- Arguing that the antecedent basis is inherent or implicit
- Demonstrating that the scope of the claim is still clear to those skilled in the art despite the lack of explicit antecedent basis
It’s important to address these issues promptly and clearly during prosecution to ensure the claims meet the clarity and definiteness requirements of 35 U.S.C. 112(b).
To learn more: