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If, as a result of conflicting statements in a specification, examiners are unable to determine whether a particular feature is essential or inessential, it should be assumed in the first instance that the feature is inessential.

If, as a consequence, a claim is not novel:

  • a novelty objection is to be taken on the basis of this interpretation; and

  • the conflict in the specification over whether the feature is essential should be clearly stated in the objection.

An objection of lack of novelty in these circumstances may be overcome by amending the description rather than the claims, provided the requirements of sec 102 are satisfied.

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