Canadian examiners' objections to claims in which the examiner argues that there is not full support for the claims in the description, employing Rule 84, have become increasingly common, especially in the biotechnology field. This objection is often made in conjunction with a lack of sound prediction objection and a scope of claim objection , i.e. the scope of the claims goes beyond what can be soundly predicted from a fair reading of the description, are excessively broad and are not adequately supported by the description. All three objections can often be overcome with a single amendment or argument.
There appear to be two basic but related grounds for a lack of support for the claims objection. The first relates to general scope of support issues in which the examiner usually argues that the scope of the claims goes beyond what is reasonable in view of the description. Sometimes the examiner will specify the point of contention, for example, by requesting that the claims recite specific proportions of compounds in a composition in order to achieve the utility required. Sometimes the examiner will require the utility be defined with greater specificity, for example, diagnosis of breast cancer rather than cancer generally. The second is an objection that is based on claiming by "desired result" rather than the combination necessary to achieve the result. This second objection can commonly be an issue in the antibody arts in which the antibody is defined by way of its activity rather than by way of its structure.
Assuming that the applicant disagrees wholly or partly with the examiner and does not wish to narrow the claims, then the first type of objection based on scope of support can often be argued by showing the state-of-the-art at the claim date by way of scientific or technical references. Another related approach which appears to have had some success is to show the state of mind of the inventor at the claim date. This can be done by way of dated laboratory notebooks. This itself is an interesting development as many of us were, perhaps naïvely, of the view that this sort of evidence was only needed in conflict procedures which disappeared with the amendments made to the Patent Act in 1989 (similar to but simpler than US interference proceedings).
With respect to the second type of objection, claiming by "desired result", this objection is most often overcome by including further details of the combination or means necessary to achieve the result in the claim or claims at issue. In the antibody arts, however, if the antibody is the focus of the claim then it is becoming increasingly common for the examiner to require structural details. Again, in the antibody arts, if the antibody is not central to the claimed invention but plays a part in it, such as use in a chemical isolation or purification step, then, sometimes an applicant can successfully argue that the language in the claims suffices.
As mentioned, such a lack of support objection is often made in conjunction with lack of sound prediction and claim scope objections and often all the objections can be dealt with together, a single amendment or argument addressing all of the objections, a point to consider when encountering such objections.
Previously published in LifeSigns- Life Sciences Legal Trends in Canada
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