ANTECEDENT BASIS in CLAIMS - What does it mean?

You may see a rejection of your claims under 35 USC §112, second paragraph, arguing that a term in your Patent claim "lacks antecedent basis".

What the heck does this mean?

To begin with, as touched upon in other articles here, claim language and the English language, while having some things in common, are really two different things. A Patent Claim is a legal definition of the metes and bounds of your invention. As such, it has little to do with narrative text.

I often compare claim language to a computer language. You may look at a program in "C" language, FORTRAN or even BASIC and see words that look like English. But when you read it, it hardly makes sense, unless you are versed in that program language. As English prose, it makes no sense at all.

And, just as trying to read a computer program as a novel makes no sense, trying to read a Patent Claim as though it were a short story is bound to cause difficulty and confusion. For this reason, you should take the arguments of these "armchair analysts" with a grain of salt, when they try to alarm you about some Patent claim being over-broad.

But getting back to antecedent basis - what does the term mean?

Well, to use the computer program analogy again, it basically means that you have failed to defined a term in your claim previously.

Consider the following example of a simple computer program in BASIC:

10 INPUT X
20 INPUT Y
30 LET Z=X+Y
40 PRINT Z
50 END

Such a program would ask for input of two variables (X and Y), add them together, and print the sum. Big deal, right? Well suppose you re-wrote the program as follows?

10 INPUT Y
20 LET Z=X+Y
30 PRINT Z
40 END

If you "ran" this program, one of two things would happen. On some computers, if X had been previously defined (and stored in memory) the program would run and deliver a sum based on that historically stored value. But for most computers, you would get the following message:

UNDEFINED VARIABLE IN LINE 20

The reason is simple. You start talking about variable X in line 20 like it was your old friend, when in fact, you never mentioned it before. It is an undefined variable. Before you start doing math with Mr. X, you have to introduce him to your computer, so he knows who he is.

Similarly, before you start introducing new terms in your claims, you have to introduce them to the Examiner.

Putting this back in a Patent context, consider the following simple claim which mirrors our computer program above:

1. An apparatus comprising:
a first input for receiving a first data value;
an adder for adding the first and second data values; and
an output for displaying the sum of the first and second data values.

Now, if you are a Patent Attorney, please set aside your howls of protest over software patent claims and §112, sixth paragraph objections. This is a learning example only.

Here, there are a number of potential §112, second paragraph antecedent basis problems.

To begin with, astute readers will note that my second data value has not been defined. Thus, my later recitation of "the first and second data values" has no antecedent basis, as I have not previously introduced the term. A better attempt would be:

1. An apparatus comprising:
a first input for receiving a first data value;
a second input for receiving a second data value;
an adder for adding the first and second data values; and
an output for displaying the sum of the first and second data values.

This is better, but still has some problems. To begin with, whenever you use the word "the" or "said" in front of a term, it has to have been previously recited in exactly those same words. Some examiners are more lax in enforcing this than others. But it never hurts to be specific.

Here, we talk about "the first and second data values" when in fact no such term has been previously defined. A better approach would be:

1. An apparatus comprising:
a first input for receiving a first data value;
a second input for receiving a second data value;
an adder for adding the first data value and the second data value; and
an output for displaying the sum of the first and second data values.

Now we have an exact 1-to-1 match in our terminology and there is no ambiguity as to whether "the first and second data values" is the same as the "first data value" and "the second data value" or some other thing.

But note in the last line, we talk about "the sum of the first and second data values". This fails on the same grounds as before ("the first and second data values" having no antecedent basis) and also because "the sum" has no antecedent basis. Correcting this yields:

1. An apparatus comprising:
a first input for receiving a first data value;
a second input for receiving a second data value;
an adder for adding the first data value and the second data value to produce a sum of the first data value and second data value; and
an output for displaying the sum of the first data value and the second data value.

This language is awkward, but claim language often is. Here we have defined the two data values, the sum of the data values. It is now clear how the thing works. Note that you could use "said" in place of "the" and it makes no difference, other than to sound more legalese.

Note that shortcuts are not permitted. You cannot call something "a first input" and later on refer to it as "the input". Similarly, the "first data value" cannot later be "the value", "the first value" or "the data value". It always has to go by its full name, "the first data value".

Note also that punctuation is important. Consider the last line:

an output for displaying the sum of the first data value and the second data value.

Suppose we re-wrote this as:

an output for displaying the sum of the first data value, and the second data value.

The meaning is entirely different, as it implies displaying two values, not the sum of two values. Perhaps a less wordy and clearer version of the claim could be written as:

1. An apparatus comprising:
a first input for receiving a first data value;
a second input for receiving a second data value;
an adder for adding the first data value to the second data value to produce a sum; and
an output for displaying the sum.

This arguably is neater, as we define "the sum" as being the first data value and the second data value added together. Now we have a short and neat term ("the sum") defined.

As an aside, some Examiners may object to such a claim as lacking coupling between the elements. You can tie the elements of the claim together better this way:

1. An apparatus comprising:
a first input for receiving a first data value;
a second input for receiving a second data value;
an adder, coupled to the first input and the second input, for adding the first data value and the second data value to produce a sum of the first data value and second data value; and
an output, coupled to the adder, for displaying the sum of the first data value and the second data value.

Note that the location and use of commas here is very critical.

The examples here use the now-derided "means plus function" claim language which is explicitly authorized under 35 USC §112, sixth paragraph, but now the subject of some controversy with regard to software claims. Claiming structure without defining function is a tricky thing and beyond the scope of this article.

* * * *

Antecedent basis is not difficult to figure out. Just remember, if you use the word "said" (or "the") before a phrase in a claim, then you had better have "said" the exact same phrase earlier on in the claim.