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Date Published

The test specified in Allowability Under Section 102(2)(a) is useful where the amendments seek to replace claim(s) to one aspect of the invention by claim(s) to another aspect of the invention.  

Claims to Article per se

A claim to an article per se would be infringed by the use of that article. Consequently, an amendment to claim the use of the article (in a manner already disclosed in the specification), would be a narrowing of the claim which would not make an act an infringement that was not an infringement previously (see Farbwerke Hoechst A.G.'s Application (1972) RPC 703). However, the reverse situation would not be allowable. A claim to the use of an article is not infringed by the article per se and therefore an amendment to insert a claim to the article per se would not be allowable (see BoehringerIngelheim International GmbH v Commissioner (2001) 52 IPR 529 at [42]).

Arguments to the effect that there is only one use for an article or substance, and therefore a claim to the use of that article or substance is effectively the same as a per se claim, are incorrect.  Where such erroneous arguments are maintained, it may indicate that the applicant has a particular reason for changing the type of claims, e.g. infringement action or extension of term. In this situation, the supervising examiner should be informed of the case and if the arguments are maintained, the matter should be brought to the attention of the Assistant General Manager (OEP).

Deletion of Words and Phrases

Deletion of "for use" or "suitable for use", or similar phrases from a claim may broaden the scope of the claims and therefore be objectionable.

In general, arguments that an amendment proposing the deletion of words and phrases from a claim is allowable, because such words or phrases do not delimit the claim, should be considered carefully. Although there are circumstances in which words may be deleted from a claim without any significant change in meaning, e.g. AMP Incorporated v Commissioner of Patents (1974) AOJP 3224, such situations are not at all common.

This aspect was discussed in some detail in Chrysler Aust. Ltd. v RegieNationale Des Usines Renault (1974) AOJP 4807, where it was stated:

"There is, of course, a considerable force behind the argument that deletion of a limiting clause from a claim would not be allowable under the provisions of sub-section (2) of sec 78 [1952 Act: sec 102(2)(a) of the 1990 Act corresponds]. But it is also clear that this argument may relate only to real limitations, and should not be necessarily extended to apparent limitations. In particular, one must be careful not to equate the deletion of words with the deletion of limitations, since not all words in a claim impose a limitation.

The latter aspect has been extensively dealt with in the decision of the High Court in Farbwerke Hoechst Aktiengesellschaft vormals MeisterLucius & Bruning v Commissioner of Patents 1972 AOJP 3524.  The High Court allowed the deletion, from a number of claims, of the words 'of the general formula given in claim 1'. Prima facie, these words have the appearance of a definite and substantial limitation. However, in his decision, Gibbs J pointed out that the question which arises is primarily one of the interpretation of the claims in the light of the specification as a whole.

After concluding that a reading of the specification before him showed that the substance of the invention was the discovery of a process, which produced chemicals with particular properties and whose formula was unimportant, and that there was no compound that answered to the formula given in claim 1, Gibbs J stated:

"The definition of the invention in the claims now under consideration therefore comprises two parts - a correct description of the nature of the process and an incorrect statement of the formula of the resulting products. On ordinary principles of construction, if the correct part of the description defines the subject matter with certainty, the incorrect part may be rejected to enable effect to be given to the document as a whole ...... Of course, if, in the present case, the formula applied to some of the compounds produced by the process, it could not be rejected as a mere erroneous addition to the description, but would have to be given effect as limiting the class of compounds to which the description applied."

Gibbs J allowed amendments sought in relation to the process claims which entailed the deletion of the reference to the formula of claim 1, as he did not regard it as an effective limitation and that removal of that limitation would not widen the claims, or have the result that the claims would not in substance fall within the scope of the claims before amendment.

For purposes of determining the allowability of an amendment under sec 102(2)(a), reference numerals in a claim referring to drawings, whether in brackets or not, do not place any limitations on the claim unless there is clear indication that they are intended to do so (Rodi and Wienenberger A.G. v Henry Showell Ltd. (1968) FSR 100; Lucent Technologies Inc v Krone Aktiengesellschaft (No 3) [2000] FCA 100). As a consequence, removal of these reference numerals in general will not result in the broadening of the claim.  Similar considerations apply to reference numerals referring to graphics and photographs.

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