PCT International Search and Preliminary Examination Guidelines

PART II THE INTERNATIONAL APPLICATION

Chapter 5 Claims

Inconsistency Between Claims and Description

5.29  Where there is any serious inconsistency between claims and description, amendments to remove this should be invited from the applicant. For example, the description may state, or may imply, that a certain technical feature not mentioned in the claims is essential to the performance of the invention. In such a case, the examiner should invite amendment of the claims to include this feature. However, if the applicant can show convincingly by way of response that it would be clear to a person skilled in the art that the description was incorrect in suggesting that the feature in question was essential, amendment of the description should be invited instead. Another form of inconsistency is that in which the description and drawings include one or more embodiments of the invention which appear to fall outside the subject matter covered by the claims (for example, the claims all specify an electric circuit employing electronic tubes and one of the embodiments employs semiconductors as an alternative). Here again the applicant should be invited to amend the claim or the description and drawings to remove the inconsistency and thus avoid any possible uncertainty which could arise later as to the meaning of the claims. However, inconsistencies which do not cause doubt as to the meaning of the claims may be overlooked.

5.30  General statements in the description which imply that the extent of protection may be expanded in some vague and not precisely defined way should be objected to as not complying with Article 6. In particular, objection should be raised to any statement which refers to the extent of protection being expanded to cover the “spirit” of the invention. Where the claims are directed to a combination of features only, any statement in the description which seems to imply that protection is nevertheless sought not only for the combination as a whole but also for individual features or sub-combinations thereof should be objected to.