Saturday, September 12, 2009

"Antecedent basis" spec objection vs. 112 First claim rejection

When you make a claim amendment that the Examiner believes is not "supported" by the specification, the typical result is a rejection under §112 ¶1. However, every once in a while the Examiner will handle this situation with an objection to the specification under 1.75(d)(1), which requires the claims to have antecedent basis in the specification. Sometimes the Examiner will combine this with a §112 ¶1 rejection.

Though I've only encountered this type of objection to the specification a few times, my arguments are basically the same no matter whether the Examiner applies a claim rejection or a spec objection. However, there is a big difference in how you proceed if the Examiner isn't persuaded by your arguments:
  • a rejection is appealable;
  • an objection alone is petitionable; and
  • an objection in combination with a §112 ¶1 rejection becomes appealable.
    (See MPEP 2163.06.II.) 
Therefore, if you're dealing with both, and you end up appealing, seems like you might as well ask the Board to decide the objection also. That means listing the objection to the specification as a grounds for appeal in your Brief, and providing arguments why the spec does provide antecedent basis.

If you have an objection without a §112 ¶1 rejection, and you're appealing on other grounds, I see several options.
  • You can petition the objection concurrently with the appeal. 
  • You can petition the objection after the decision on appeal.
  • You can wait for the decision on appeal, and hope the objection simply goes away!
    I found several cases in PAIR where the Applicant won an appeal on prior art rejections, and the Examiner issued a Notice of Allowance without explicitly withdrawing the spec objection. (See, e.g., Serial Nos. 10/329,617; 10/010,337; 09/325,944.) Perhaps when a spec objection is the only thing standing between the Examiner and a count for Notice of Allowance, the Examiner had second thoughts about the objection.

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