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
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