2.11.7.6A Claiming by Result

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 2.11.7.6 Claiming by Result.

In this topic:

In some circumstances, a claim may define a product in terms of its properties, or define a process in terms of the result to be achieved.  Whether such claims are objectionable under sec 40(3) or sec 40(2)(a) should be considered on the basis of a proper construction of the specification and the claims and the particular facts of the case.

The principles for determining whether a claim is enabled by the disclosure of the specification for the purposes of sec 40(2)(a) and sec 40(3) are provided at 2.11.3.4.2A Section 40 Enabling Disclosures.  For sec 40(3), the additional principles for determining whether a claim is supported by the disclosure are outlined in 2.11.7.1A Principles for Examination.

What is a Claim by Result?

A claim by result is a claim drafted with reference to the result achieved, rather than the technical features that produce that result, for example:

“An ash tray receptacle which, without the use of movable parts, retains the smoke arising from objects thrown into it.”

These claims are sometimes referred to as “all means claims”, as they claim all means of achieving the result.

Claims by result are directed to a class (of products or processes) that possess the specified properties or features.  Difficulties can arise in understanding the full scope of such claims (see also 2.11.7.9A Broad or Speculative Claims in relation to these types of claims).  Consistent with the approach to all other claim types, once the scope of the claim has been determined, there are two questions to consider:

i. whether the specification provides enablement across the scope of the claim; and

ii. whether the claim extends beyond the contribution to the art.

Enablement for Claims by Result

Broad claims by result may be enabled across their whole scope where the result defined in the claims represents a practical application of a principle disclosed in the specification. 

However, if the claim extends to subject matter that cannot be performed by application of any principle in the specification, then the claim is not enabled across its full scope.  For example, where the problem was simply how to do automatically what could already be done by a skilled workman, the principle applied to solve the problem lay in the way a machine operated. In this case:

“Assuming [the] principle to be new, it might be possible for the inventor, having shown one method of applying it to the solution of the problem, to protect himself for the life of his patent from any other method of applying it for the same purpose, but I do not think that the novelty of the principle applied would enable him to make a valid claim for all means of solving the problem whether the same or a different principle were applied to its solution.” (Biogen v Medeva Plc [1997] RPC 1 at 50)

It follows that the scope of a claim will not be enabled or supported if it extends further than alternative applications of the principle in a way that, while not explicitly disclosed, would nevertheless be apparent to the skilled addressee who had read the specification (T484/92).  

Similarly, for claims comprising a combination of features:  

“When a combination claim states an invention which gives an old result by a new means, the monopoly is limited, at any rate prima facie, to the new means.  But when by a new application of principle the inventor has obtained a new result or thing, even when it is done by a combination, he may claim all the alternative means by which the thing or result may be achieved [by applying the principle].”  (Shave v H V McKay Massey Harris Pty Ltd (1935) 52 CLR 701)

Breadth of the Claim in View of the Contribution to the Art

Claims by result must satisfy the same requirements as other claim types with regard to not extending beyond the contribution to the art.  That is, under sec 40(3), the breadth of a claim must not be broader than is justified by the contribution to the art.  In particular, a claim by result will lack support if it encompasses every way of achieving a result when it enables only one way and it is possible to envisage other ways of achieving that result which make no use of the invention, i.e. ways which owe nothing to the teaching of the specification or any principle it discloses (Biogen v Medeva [1997] RPC 1 at 50-51) (see also 2.11.7.1A Principles for Examination and in particular 'Scope of the Claims Must Not be Broader Than is Justified by the Contribution to the Art’).

Claims by result may be objectionable under sec 40(3) and/or sec 40(2)(a) if the specification enables the production of only one member of a class defined by the known desirable properties of the class (H. Lundbeck A/S V Generics (UK) Ltd [2008] EWCA Civ 311; [2008] RPC 19 at [60]).  However, this will depend on the particular facts of the case.  For example:  

“ … if a man finds a particular way of making a new substance which is 10 times harder than diamond, he cannot just claim “a substance which is 10 times harder than diamond.”  He can claim his particular method and he can claim the actual new substance produced by his method, either by specifying its composition and structure or … by reference to the method … but no more.  The reason he cannot claim more is that he has not enabled more – he has claimed the entire class of products which have the known desirable properties yet he has only enabled one member of that class. … Such a case is to be contrasted with the [situation] where the desirable end is indeed fully enabled ...”  (H. Lundbeck at [61])

A claim by result will also be objectionable under sec 40(3) if there is an inconsistency between the invention disclosed and the invention claimed, for example if an essential feature is missing from the claim (see 2.11.7.3A Inconsistency Between the Invention Disclosed and the Invention Claimed).

A claim to all means of achieving an obviously desirable goal may be considered supported for the purposes of sec 40(3), provided that:

• the claim has been enabled over its full scope by the disclosure in the body of the specification; and
• no alternative means can be envisaged to achieve the desired goal, which owe nothing to the teaching of the specification or any principle which it disclosed.  (Biogen v Medeva [1997] RPC 1 at 51-52)