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5.5.3.2 Read the specification as a whole

Date Published

Overview

A complete specification must ‘disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art’ (s40(2)(a)).  In assessing this requirement, it is necessary to take into account the whole of the complete specification, i.e. both the description and the claims. 

As indicated in Rosedale Associated Manufacturers Ltd v Carlton Tyre Saving Co Ltd [1960] RPC 59 at 69:

"It is clearly ... legitimate and appropriate in approaching the construction of claims to read the specification as a whole. Thereby the necessary background is obtained and in some cases the meaning of the words used in the claims may be affected or defined by what is said in the body of the specification."

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Interpreting the meaning of ambiguous wording

If a claim is ambiguously worded, the examiner should interpret its meaning in the context of the specification as a whole. Conversely, examiners can use the claims to resolve any ambiguities elsewhere in the specification.

In interpreting the scope of claims, the plain meaning of words must be adopted unless there is an ambiguity in the claim. An ambiguity in the claim can be resolved by reference to the description (Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 at page 479:

"If the expression is not clear it is then permissible to resort to the body of the specification to define or clarify the meaning of words used in the claim without infringing the rule that clear and unambiguous words in the claim cannot be varied or qualified by reference to the body of the specification".

Cannot make clear claims obscure

If a claim is clear, it is not to be made obscure because obscurities can be found in particular sentences in other parts of the specification. Additionally, "if claims have a plain meaning in themselves, then advantage cannot be taken of the language used in the body of the specification to make them mean something different" (EMI v Lissen (1939) 56 RPC 23 at page 39).

Limitations indicated in the body of the specification

It is not legitimate to confine the scope of the claims by reference to limitations which may be found in the body of the specification but are not expressly, or by proper inference, reproduced in the claims themselves. To put it another way, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification (Decor Corp v Dart Industries 13 IPR 385).

In some cases, the meaning of the words used in the claims may be qualified or defined by what is said in the body of the specification (Decor Corp v Dart Industries 13 IPR 385). The context of the specification may imply a limitation on the scope of the claims. In International Business Machines Corp v Commissioner of Patents (1991) 22 IPR 417, the specification related to computer graphics, but the claim made no specific reference to a computer environment. Burchett J found that:

"When the present specification is read, the whole of the context rises up to insist that claim one is talking about the operation of computers. Almost the first words of the specification inform the reader that the invention ‘relates to computer graphics and more specifically to a method and apparatus for generating curves on computer graphic displays’. The recital of the prior art reinforces the clear impression thus conveyed from the beginning of the document."

Similarly, in Synthetic Turf Development v Sports Technology International (2005) FCA 69 (affirmed in (2005) FCAFC 270), the specification described a process where artificial turf was laid and packed with sand, with subsequent rolling to ‘crimp’ the ends of the fibres. An alleged infringing product crimped the fibre before the turf was laid. The claim merely referred to ‘crimp’ and the specification did not contain a ‘dictionary definition’ of ‘crimp’. Nevertheless, the court construed ‘crimp’ in the context of the specification as being crimped after laying.

Indications of an aim or intent

​​​​​​​Where the specification indicates an aim or intent, this may require consideration when construing the claims. In Apotex Pty Ltd v Sanofi-Aventis Australia Pty Ltd (No 2) (2012) FCAFC 102, the Full Court found that the:

"... description shows that the object or end in view of the claimed method is the prevention or treatment of psoriasis by the administration of leflunomide …"

That is, the purpose of the administration was relevant in construing the claim.

It is possible to use the claims to resolve any ambiguities in the description (Kauzal v Lee (1936) 58 CLR 670 at page 687). This differs from giving the claims a gloss from the description that is not legitimate (Welch Perrin & Co Pty Ltd v Worrel (1961-62) 106 CLR 588 at page 610), since the limitation arises from the whole thrust of the specification as against mere comments in the description.

Amended Reasons

Amended Reason Date Amended

Published for testing
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