2.11.7.3A Inconsistency Between the Invention Disclosed and the Invention Claimed

Note: The information in this part only applies to:

• standard patent applications with an examination request filed on or after 15 April 2013.
• innovation patents with an examination request filed on or after 15 April 2013.
• innovation patents where the Commissioner had not decided before 15 April 2013 to examine the patent.  

For all other standard patent applications/innovation patents, see 2.11.7.3 Relationship Between the Invention Described and the Invention Claimed.

In this topic:

Inconsistencies between the invention claimed and the invention described will result in a lack of support under sec 40(3) where:

1. The description and any drawings, graphics, photographs or sequence listing do not provide sufficient information to enable the person skilled in the art to carry out the claimed invention over its full scope without undue burden or the need for further invention (see 2.11.3.4.2A Section 40 Enabling Disclosures); or
2. While the claimed invention is enabled, there is otherwise a serious inconsistency between what is claimed and the description of the invention and its stated objects and benefits.

Each case must be considered on its merits, based on a proper construction of the specification, particularly the claims.

Enabling Disclosure

Where the body of the specification suggests that a function is to be carried out in a particular way, with no indication that alternative means are envisaged, and a claim encompasses other means, or all means, of performing the function, examiners should consider whether the claim is supported over its full scope (see 2.11.3.4.2A Section 40 Enabling Disclosures).

A claim should be amended to include a necessary feature if, without it, the person skilled in the art could not carry out the claimed invention without undue burden or the need for further invention.

Serious Inconsistencies

A serious inconsistency (other than a lack of enablement) does not arise merely because an invention is claimed more broadly than it is described, for example, because a feature not mentioned in the claims is found in a consistory statement or the described embodiments.  However, where it becomes apparent from the information in the body of the specification that a particular feature is missing from the claims that is clearly essential to how the described invention works and achieves its stated benefits, then an objection will be appropriate even if the claim is enabled.  

This form of support was discussed in Calix Limited v Grenof Pty Ltd [2023] FCA 378 at [128]:

“Although discussion of s 40(3) is often focused on the breath of the claim, there may be some claims which lack support not because they are too broad, but because they define an invention that is materially different to what is described in the body of the specification. Hence, a claim that includes a feature not disclosed in the specification, or omits a feature that is disclosed, may lack support because the invention claimed is materially different from the invention disclosed. Whether or not the claim will lack support in such circumstances will depend on the proper characterisation of the invention disclosed in the body of the specification and the invention claimed.”

For example, where an optical arrangement for an external cavity laser is claimed including an intra-cavity filter, but the invention is described in the body of the specification as achieving a reduced linewidth through the use, as the intra-cavity filter, of a diffraction grating with particular characteristics, then the absence of the particular grating from the claim is a serious inconsistency, and an objection should be raised. Similarly, where a claim is directed to the preparation of a tablet by mixing the ingredients, but the invention is described in the body of the specification as achieving a stable tablet when the ingredients are combined under moist conditions, then the absence of wet processing is a serious inconsistency.

On the other hand, if a claim is directed to a gear arrangement for a vehicle, but is described for use only in a particular application, e.g. bicycles, a lack of support arises only where it is apparent that the gear arrangement will work and achieve the stated benefits only when applied to bicycles.

A serious inconsistency can be addressed where appropriate as a lack of utility. In this case it is not necessary to object to a lack of support. Similarly, where a textual inconsistency is objected to as a lack of support, it is not necessary to object to a lack of utility that may also arise.  Examiners are to use their judgment as to the most pertinent objection in the circumstances.

It may be possible to overcome a serious inconsistency by amendment.  However, amendment of the description to remove a reference to a feature being essential may only be allowable under sec 102(1) where:

• an independent claim which implies (by omission) that the feature is not essential was present at the date of filing; and
• the applicant can plausibly and credibly demonstrate that it would be clear to a person skilled in the art that the description was incorrect in suggesting that the feature in question was essential in order to perform the claimed invention.

Note: A reference to a feature being one which is clearly ‘essential’ in the context of a serious inconsistency is a feature which is necessary to how the described invention works and achieves its stated benefits.

Features Disclosed Only in the Claims

Support for the claimed invention must be found in the description and any drawings, graphics, photographs and/or sequence listing.  Where a feature appears only in a claim, with no explicit or implicit disclosure of that feature in the body of the specification, the claim will not be supported even if the claim may itself constitute an enabling disclosure for the purpose of sec 40(2)(a).  In this situation, provided that the feature was disclosed in a claim of the application as filed, it is generally permissible to amend the description so that it includes the feature (see 2.23.7A Allowability of Amendments to Complete Specifications).

For example, where the description makes clear that a range of common mechanical fastening means are suitable for use in the invention, but only nuts and bolts are given as an example, a claim that specifies screws will be enabled and does not result in a serious inconsistency.  A screw as a common mechanical fastening means is implicitly disclosed. On the other hand, where a claim adds the requirement for all components of the device to be coated in titanium nitride and the description is totally silent on surface treatments, then the claimed invention will not be supported.

Preferred Features or Examples Not Claimed

Where the body of the specification includes preferred features or embodiments of the invention that are not claimed (e.g. comparative examples or embodiments that are excluded from the claims by amendment to overcome objections), this is not a serious inconsistency and it is not necessary to amend the specification to remove this subject matter, unless it casts doubt upon the meaning of the claims (see 2.11.3.10A Claims as Basis of Disclosure).