8.3.3.1 Allowability and Omnibus Claims

In view of the restrictive provisions of sec 102(2)(a), the exact meaning of omnibus claims is of importance, particularly where the applicant files a completely new set of claims, or seeks to replace an omnibus claim with another form of claim. For information on the interpretation and meaning of omnibus claims see 2.11.2.3.9 Omnibus Claims.

An omnibus claim may sometimes appear to have been included for the purpose of covering every possible aspect described (or even implied) in the specification. Examples of wording of such claims are "each and every novel feature" and "the features individually and collectively". Such claims clearly cannot be considered as defining any invention at all and their scope is indeterminate. Therefore, as a general rule, they provide no basis upon which to propose amendments allowable under sec 102(2)(a). However, it is not objectionable if such a claim is replaced by a narrow omnibus claim to features that have been claimed in a generic or substantive claim.

There may also be situations where a claim of the type mentioned above requires further consideration. Thus, in Picton Hopkins and Sons Pty. Ltd.'s Application (1965) AOJP 3118, the only claim read:

"A building partition having the features of improvement, collectively and individually as disclosed".

Amended claims, narrow in scope, were allowed to the building partitions specifically described as the invention in the specification.

In Irish's Application (1966) AOJP 321, the only claim read:

"All of the improvements herein disclosed individually and in combination".

At page 322 it was stated:

"The original claim, by no stretch of imagination, can be called clear and succinct. It does not attempt to set out in the claim a statement of any form of mechanical construction. However, by virtue of the words "all of the improvements herein disclosed" it imports any form of improved construction that is identified in the body of the specification as constituting the invention."

The claim which was ultimately allowed was narrow in scope and closely followed the consistory statement given in the provisional specification. However, this case does not serve as a precedent for situations in which no appreciation of the invention may be derived at all.

Omnibus claims should be reassessed each time amendments are proposed. Amendments to the body of the specification, the claims or the drawings may result in new objections applying to omnibus claims under either or both of the provisions of sec 102(1) and sec 102(2), i.e. claiming of matter not in substance disclosed, or broadening of scope.

Where amendments are directed solely to the description, this may result in a change to the scope of an omnibus claim. Thus, the insertion of further examples of the invention will lead to an expansion of the scope of an omnibus claim. The critical question is whether the new scope of the omnibus claim travels beyond the scope of the claims as a whole before the amendment.