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Intellectual property assets may be difficult to identify, effectively protect, and leverage. LeonardPatel PC specializes in strategy, procurement, and enforcement for comprehensive intellectual property protection.

Antecedent Basis

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

Overview

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.

Established Corporations

LeonardPatel works closely with corporate counsel to develop and adhere to an effective patent portfolio management strategy and to deliver high quality intellectual property services at reasonable and predictable fees. We offer a full suite of intellectual property services to assist corporate counsel with the many issues that may arise in the context of a large intellectual property portfolio.

Government Organizations

LeonardPatel assists government technology organizations such as NASA with evaluating and protecting promising technologies. We have a deep understanding of the process of protecting government intellectual property assets. We have a CAGE code, a DUNS number, and we are qualified as a SBA small business, as is often preferred for government contractors.

Startups And Individual Inventors

LeonardPatel offers end-to-end intellectual property services to startups and individual inventors, including evaluating the business case to determine whether intellectual property protection makes sense, procuring intellectual property protection, and, if desired, assisting with valuing and licensing the technology. We also attempt to connect startups with venture capital sources, where possible.