outermost layer antecedent basis

Started by novobarro, 05-21-18 at 07:07 PM

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novobarro

I received a 112b rejection for the term"outermost layers." for lacking antecedent basis.  This is the first time this term was used and it is simply presented as "outermost layers" without the article "the."  Is the Examiner trying to say that outermost implies that we should have previously introduced several layers because outermost implies that it  is the layer that is furthest from the center?

lazyexaminer

Not to be unhelpful, but this type of thing you really need to talk to the examiner cause only they know what they meant. Or you could simply traverse the rejection and hopefully they will provide more explanation.

But yeah, maybe it is not clear that the claim requires multiple layers so it is not clear what "outermost" is in relation to? Or maybe it is ok because clearly there must be a number of layers in this type of thing. I can see it being perfectly fine or a problem depending on the facts, but again I have no idea what the examiner was trying to say.

I'm not your examiner, I'm not your lawyer, and I'm speaking only for myself, not for the USPTO.

mersenne

Quote from: novobarro on 05-21-18 at 07:07 PM
Is the Examiner trying to say that outermost implies that we should have previously introduced several layers because outermost implies that it  is the layer that is furthest from the center?

It sounds like it...if your previous structure didn't specifically introduce some of the layers and indicate that they're stacked on top of each other (or whatever your arrangement is), then I think you have a problem.  The minimal amendment would be to say "...an outermost layer..." but that doesn't help much unless the rest of the claim makes clear that other elements are somehow stacked into layers.

Note that this sort of structure is often tricky to claim, if it's possible to change the layer stacking order, or to have extra layers interleaved between the ones that you talk about in the claim.
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novobarro

ok, there aren't multiple layers defined, and in we are only claiming one of the layers.  I'm thinking amending to just "outer layer" will be ok because it doesn't imply more than one layer.

Toot Aps Esroh

"112b rejection for the term"outermost layers." for lacking antecedent basis"

While verifying exactly what the examiner wants is a good idea, if I received this rejection I would simply take it at face value as an antecedent rejection as stated, introduce outermost layers, then change the second recitation of outermost layers (the one present in your claim as rejected) to the outermost layers.
I got nothing to say here.  Y'alls all already know all this.


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still_learnin

Quote from: Toot Aps Esroh on 05-22-18 at 02:25 AM
"112b rejection for the term"outermost layers." for lacking antecedent basis"

While verifying exactly what the examiner wants is a good idea, if I received this rejection I would simply take it at face value as an antecedent rejection as stated,

I agree on both points. If you want more info or direction, call the Examiner, but "lacking antecedent basis" is clear to me.

Quote from: Toot Aps Esroh on 05-22-18 at 02:25 AM
introduce outermost layers, then change the second recitation of outermost layers (the one present in your claim as rejected) to the outermost layers.

"Introduce" meaning use an indefinite article the first time the term appears: "an outermost layer."

Quote from: novobarro on 05-22-18 at 01:55 AM
ok, there aren't multiple layers defined, and in we are only claiming one of the layers.  I'm thinking amending to just "outer layer" will be ok because it doesn't imply more than one layer.

Correct: "an" allows for more than one (i.e. presence of a second doesn't avoid infringement) but does not require more than one.
The above is not legal advice, and my participation in discussions on this forum does not create an attorney-client relationship.

smgsmc

Quote from: novobarro on 05-21-18 at 07:07 PM
I received a 112b rejection for the term"outermost layers." for lacking antecedent basis.  This is the first time this term was used and it is simply presented as "outermost layers" without the article "the."  Is the Examiner trying to say that outermost implies that we should have previously introduced several layers because outermost implies that it  is the layer that is furthest from the center?
Is the actual term used in the claim "outermost layer" or "outermost layers"?



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