How to respond to Australian subsection 40(3) objection

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In Australia, how does one usually deal with an objection that a claim lacks support under subsection 40(3).

Say I am claiming a kettle with a specific type of heating filament.

The claim has been accepted as novel & inventive.

However, now the Examiner says that the invention defined by the claim lacks support under subsection 40(3) because it omits a feature which appear necessary to perform the claimed invention, for example:

  • A source of electric current (i.e. to supply electrical power to the heating filament) (the source of electric current is described in the description, say page 3, line 4)

In responding, does the AU attorney usually:

  1. amend the claim (e.g. to include a source of electric current); or
  2. amend the description on page 3, line 4 (e.g. to say "In some embodiments, there is provided a source of electric current")?

Thanks!

Trock

Posted 2020-12-10T14:19:10.427

Reputation: 1

At least in the US, you can only amend claims, not the specification (except for typos). I don't know for Australian patents. – Eric S – 2020-12-10T15:06:05.420

Thanks Eric. In Europe its a bit different in that you are usually required to amend the description to bring it into conformity with the amended claims (e.g. if you've limited to a particular aspect, you are sometimes required to clarify what subject matter is within the scope of the claims or not, like: "in another aspect, outside of the scope of the claimed invention, there is provided..." etc). I am wondering whether a Australian subsection 40(3) objection is a similar sort of thing – Trock – 2020-12-10T16:55:15.563

I am not a lawyer so I always defer to more authoritative contributors for such specifically legal questions. – Eric S – 2020-12-10T18:52:25.210

40(3) is very short "(3) The claim or claims must be clear and succinct and supported by matter disclosed in the specification." Since you can't add to a disclosure after filing either you need to argue the examiner is wrong or narrow the claim such that it is supported. – George White – 2020-12-10T20:20:21.030

@Trock please read my comment to George White's answer in case it may shed some light on how to deal with the objection. – the Europeist – 2020-12-15T11:21:07.723

Answers

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I'm a U.S. patent agent but am not particularity knowledgeable about the AU patent system. I dealt with them through a local firm. However,40(3) is very short .

"(3) The claim or claims must be clear and succinct and supported by matter disclosed in the specification."

That doesn't seem very relevant to the concern - "it omits a feature which appear necessary to perform the claimed invention".

So a claim might not be clear, it might have redundant wording, or (more likely) there are things in a claim that are not supported by the disclosure. Since you can't add to a disclosure after filing either you need to subtract from the claim, i.e. narrow it, such that it is supported or point out how the examiner missed the location in the disclosure where the support resides.

George White

Posted 2020-12-10T14:19:10.427

Reputation: 21 648

This seems to be a clarity requirement analogous to that in European countries, also in the EPC. The legal provision in Europe is like the one you have reproduced of the Australian Patent Law, yet in the Guidelines it is laid down that subject-matter is only clear when it includes all the features that are essential for the invention (cf. European Guidelines). So if the application describes that e.g. a nut is necessary for the invention to function, the nut must be defined in the claim, or is unclear otherwise.

– the Europeist – 2020-12-15T11:19:08.527