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Date Published

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 Only Disclosure is in a Claim.

In considering amendments, each case should be assessed on its own merits.  In general, even where an amendment is proposed that has the effect of narrowing a claim, consideration should be given to whether the proposed claim is supported by the disclosure of the specification as filed, or whether the amendment would add new matter contrary to sec 102(1) (see 2.23.8A Allowability Under Section 102(1)).

Narrowing a Numerical Range in the Claims

Note: The following only applies to considerations of support for a proposed amendment to a claim, or a claim of a divisional application.

Insertion of a specific numerical sub-range into a claim, where the sub-range is not explicitly stated in the description, may result in a claim which is not supported by the description.  When such amendments are proposed, examiners should consider what the specification as filed disclosed about the ranges; it is not merely a question of looking for any mention of a range, but rather assessing the disclosure in respect of the ranges.  

In general, where a proposed amendment to introduce a sub-range represents a choice from a number of alternative values in a broader range disclosed, claims to the sub-range will be supported and the amendment will be allowable under sec 102(1).  However, if the applicant submits that a claimed sub-range is a selection from the broader range disclosed, and the body of the specification does not teach that the sub-range has any advantageous properties that would support claims to a selection, the claim as proposed to be amended would lack support.  It would also add new matter contrary to sec 102(1).

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