2.23.9.2 Meaning of "fall within the scope of the claims"

The word "claims" in this context means "a claim (including a dependent claim) of a complete specification". Furthermore, it is the claims immediately before amendment with which a comparison is required. Thus, where the claims have already been amended following a request made under Chapter 10, the allowability of any subsequently proposed amendments under sec 102(2)(a) is determined by reference to the claims as previously amended.

In W.J. Voit Rubber Corp.'s Application (1965) AOJP 1752, "the scope of the claims" was held to mean "the scope of the claims as a whole". The same view was expressed in AMP Incorporated v Commissioner of Patents (1974) AOJP 3224 at page 3227, where it was stated:

"The amendment may be allowed if the amending claim will in substance fall within the scope of the claims of the specification before amendment. It is necessary therefore to look at the other claims in order to see their scope ... Again it is not necessary before an amendment is allowed to find that the amended claim would actually fall within the scope of one or all of the other claims. It need only fall in substance within that scope."

Therefore, all claims need to be considered in order to determine their scope. The monopolies of the original claims may also be added together. Thus, if the original claims included a claim to a method performed at 20°C-70°C and another claim to the same method performed at 70°C-100°C, an amended claim to the process performed at 20°C-100°C would not be objectionable (see Hilti v Ramset (1979) AOJP 1761 at page 1764).

However, it is not permissible to make a mosaic of the original claims for the purpose of determining the allowability of an amended claim. For example, if an original claim disclosed an apparatus comprising parts A, B, and C, and another original claim disclosed an apparatus comprising parts B, C and D, then an amended claim to apparatus comprising parts A and D would not be allowable.

The meaning of “in substance fall within the scope of the claim” was recently considered in the context of sec 70(2)(b) (and sec 102(2)(a)).  In ImmunoGen, Inc. [2014] APO 88, a claim was directed to a process for producing an antibody conjugate.  The Deputy Commissioner concluded that a claim to a product made by a particular process is substantially indistinguishable in scope from a claim to the particular process used to make the product.  Consequently, it was held that the antibody conjugate when produced by a process in substance falls within the scope of a claim to a process for preparing the antibody conjugate.