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F Hoffman-La Roche & Co AG v Commissioner of Patents [1971] HCA 3; (1971) 123 CLR 529 (22 February 1971)

CATCHWORDS

HEARING

DECISION

2. The first question that arises is whether the priority dates in the proposed amendment are incorrectly stated. The combined effect of ss. 45 (1) and 142 (4) of the Act in the present case is that the priority date of any claim in the complete specification which is "fairly based on matter disclosed in one or more of the basic applications" is the date on which that matter was first so disclosed, whereas the priority date of any claim not so fairly based is the date of lodgment of the complete specification in Australia. The supervising examiner found that the priority dates of certain of the claims in the specification as proposed to be amended ("the proposed claims") were the dates of the second and third basic applications respectively and that the priority date of each of the remaining claims was the date of lodgment of the complete specification. He rejected the appellant's contention that in the case of some of the proposed claims the priority date was the date of the first basic application. (at p532)

3. The question that falls for decision in the present case is therefore whether the proposed claims which bear, as their priority dates, the date of the first basic application are fairly based on matters disclosed in the first basic application. It is, however, unnecessary to review all those proposed claims in detail for it is agreed that proposed claims 2, 3 and 4 may be taken as typical of all those in dispute so that the appellant's success or failure in respect of those proposed claims will determine the fate of the other claims in respect of which there is a dispute as to the priority date. (at p532)

4. The first basic application was primarily concerned with a process for the manufacture of tricyclic compounds although it also included claims for the compounds themselves. It stated that the compounds obtainable in accordance with the invention are characterized by manifold effects on the nervous system and may find use as medicaments, for example, in the form of pharmaceutical preparations of various stated kinds. The process described in the first basic application presented those carrying it out with a number of wide choices, with the result that the class of compounds obtainable by means of the process was a very large one. It is, I think, unnecessary to set out the details of the process as described in the first basic application because the ultimate facts of the matter are not in dispute; it is the conclusion to be drawn from them and the principle of law to be applied to them that is in controversy. It is enough to say that the first basic application discloses a class of compound whose definition includes four variables. First, the atoms in the compounds are arranged in a fused ringed system comprising two benzene rings fused to a cycloheptadiene ring (in which two double bonds are present) or to a cycloheptatriene ring (in which three double bonds are present). The resulting compounds may be described as either dienes or trienes. In the case of this variable two choices only are open; it may be called a constant variable. Secondly, the aromatic nucleus may have a substituent chosen from a list of fifteen possible substituents or groups of substituents (including halogen). In the words of the supervising examiner, "the diversity, and possible combinations, of these substituents is such that an enormous number of compounds is envisaged". This may be an exaggeration if the supervising examiner is speaking of this stage of the process, but if he is speaking of the number of combinations of all the variables his words are not inappropriate. Thirdly, the alkylidene radical linking the nucleus to an amino radical may be one of a class of hydrocarbon radicals described by the supervising examiner as "vast in number". However the first basic application specifically mentions sub-groups and thus accents a more limited class. Fourthly, the amino radical may come from a group which may be very large. Since any combination of the four variables would result in the production of a compound within the scope of the first basic application, it follows, again to quote the supervising examiner, "that a vast field, the limits of which are beyond comprehension, is encompassed". Counsel for the respondent pointed out that it appears by logical deduction from the chemistry of the matter that over 400,000 compounds would lie within this field, and although, to use the words of Jenkins J. in May & Baker Ltd. v. Boots Pure Drug Co. Ltd. (1948) 65 RPC 255, at p 287 , it would not be right "to press unduly the mathematical results which ensue from computing the full range of permutations and combinations of which the prescribed or permitted component substances are theoretically capable", the class is indeed a vast one. (at p533)

5. The first basic application included a number of examples to which I shall later refer. (at p533)

6. It is unnecessary to discuss the second and third basic applications, except to say that a compound known as nortriptyline, which is the subject of proposed claim 3 in the complete specification, is disclosed as example 17 in the second basic application and the compound described in proposed claim 4 is disclosed as example 18 in the third basic application. (at p533)

7. The claims in the complete specification, both in its form as originally lodged and in its form as proposed to be amended, are for organic chemical compounds, therapeutic compositions incorporating the compounds, processes for producing the compounds, compounds as products of the processes and processes for producing therapeutic preparations. The complete specification states that the compounds are distinguishable for their manifold activity on the nervous system but adds that "especially remarkable is the rapid onset of action following the administration of these substances". It goes on to say that the compounds can be administered as pharmaceuticals in conventional pharmaceutical preparations. This statement of the utility of the compounds is similar to that in the first basic application except for the additional words which I have just quoted. (at p534)

8. Proposed claim 2 is for a class of compounds and pharmaceutically acceptable acid addition salts thereof. The class as defined by proposed claim 2, which takes as its starting point a structural molecular formula set out in proposed claim 1 which is the same as the commencing formula set out in the first basic application, in a sub-class of the class of compounds described in the first basic application, defined in terms of the same four variables as follows: first, the compounds may be dienes or trienes; secondly, the aromatic nucleus will either be unsubstituted or substituted by halogen; thirdly, the radical linking the nucleus will be propylidene; and fourthly, the amino radical will be a 1 to 4 carbon atom monoalkyl amino radical. Proposed claim 3 is for a compound forming part of this sub-class; it is a diene, the aromatic nucleus is unsubstituted, the radical linking the nucleus is propylidene and the 1 to 4 carbon monoalkyl radical is a methyl radical. This compound is nortriptyline which is apparently the most important of all these compounds from a commercial point of view. Proposed claim 4 is for another compound having the same composition as nortriptyline except that it is a triene. (at p534)

9. Proposed claims 2 to 4 are, therefore, for compounds which form part of the large class disclised in the first basic application. However, the supervising examiner considered that those proposed claims are not fairly based on the first basic application, because that application conveys no fair suggestion, however small, of the particular combinations of molecular segments that go to make up the compounds described in proposed claims 2 to 4. (at p534)

10. It is convenient now to return to consider the examples given in the first basic application. There were twelve examples but, since two of them lead to the same result, the supervising examiner treated them as producing eleven exemplary compounds. All, except one, of these compounds were tertiary amines and, therefore, not within the scope of the complete specification which relates only to secondary amines. (It may be mentioned that the tertiary amines were made the subject of a different application in Australia which has resulted in the grant of a patent.) In nine of the exemplary compounds the nucleus was unsubstituted, but in the case where there is a substituent it is not a halogen. In nine compound also, although not the same nine, the alkylidene radical is propylidene. No example is given in which the amino radical is a monoalkyl. In the case of one example (example 3) the exemplary compound differs only from nortriptyline in that it is a tertiary amine rather than a secondary amine. The amine used in the example is dimethylamine, whereas if methylamine had been used the result would have been to produce nortriptyline. The supervising examiner said that although it might be fair to state that the examples in the specification do accent the combination of an unsubstituted nucleus and a propylidene radical, it cannot be said that they convey any clear suggestion to combine that combination with a 1 to 4 carbon atom monoalkyl amino radical. He said that the same applies to the combination of a halogen substituted nucleus, a propylidene radical and a 1 to 4 carbon atom monoalkyl amino radical. He added that it is true that, as regards the amino group, the first basic specification states (at p. 7, ll. 9 and 10) that it may be introduced by reaction with "suitable amines", and mentions as examples "monoalkyl amines or dialkyl amines (such as methyl amine, ethyl amine, dimethyl amine, diethyl amine)". However these are only two groups included in a general listing of suitable amines and in his opinion there is no basis for placing any greater significance on the monoalkylamines than on any of the others listed. (at p535)

11. The evidence comprises two affidavits sworn by two experts, Mr. Pickering, a patent attorney who holds a science degree, and Professor Dahn, a research chemist. There was also tendered an agreed statement which contains an introduction to the chemistry relating to the application. (at p535)

12. Mr. Pickering in his affidavit deals with the four variables that I have already mentioned. He points out that the first of these (diene or triene) covers two alternatives but is not variable in the same sense as the others. It is defined in the same way in the first basic application and throughout the complete specification. As to the second variable, he says that the first basic application discloses compounds which may be either substituted or unsubstituted and halogen is specifically referred to as a substituent (although, as I have said, it is mentioned as one of fifteen substituents or groups thereof). As to the third variable, he points out that the propylidene radical is specifically mentioned in the first basic application and is also present in most of the examples. As to the fourth variable, and the limitation in proposed claim 2 of the N-substituent to 1 to 4 carbon atom alkyl radicals, he says that "there is admittedly no clear direct basis in the basic Swiss application for this group although two radicals from the group, i.e., methyl and ethyl, are described in that such radicals would result from the use of methyl amine and ethyl amine as described on p. 7, ll. 9 and 10 of the basic specification". His conclusion is summarized by saying that since the first basic application accents compounds in which the nucleus is unsubstituted and the radical is propylidene, and also contains a disclosure of the production of the monomethylamino and monoethylamino derivatives (as well as many other amino derivatives) of the compounds described, it is "natural that a reader would readily construe the reference to reaction with a monoalkylamine (or any other amine) to apply with respect to the compounds principally contemplated in the invention, i.e., the nuclear-unsubstituted propylidene compounds". He adds that similarly the halo-substituted compounds are suggested in the basic specification, though perhaps not with the same degree of clarity. For these reasons he suggests that the combination of the first three variables with the fourth variable to give the compounds in proposed claim 2 is fairly suggested and that a fortiori proposed claim 3 is fairly based. In dealing with the examples contained in the first basic application, he points out that in all except four of those examples the first three variables were respectively diene or triene, unsubstitution and propylidene. He continues: "By merely substituting the monoalkylamines (specifically methylamine and ethylamine) referred to on p. 7, ll. 9 and 10 of the Swiss specification for the amines of examples 1 to 7 and 10 an exercise which would involve no difficulty for a chemist, one would obtain the (ring unsubstituted) compounds of claim 2. More specifically by replacing the amines of each of examples 1 to 6 and 10 with methylamine and employing ordinary laboratory techniques one would necessarily obtain in each instance the particular compound claimed in claim 3, whilst similarly by replacing the amine of example 7 with methylamine one would obtain the compound of claim 4, whereas by replacing the amines of each of examples 1 to 6 and 10 with ethylamine one would in each instance obtain the compound specifically claimed in claim 5. In order to obtain the corresponding compounds of claim 2 wherein B indicates that the ring is substituted by halogen it would simply be a matter not involving research or experimentation to follow examples 1 to 7 and 10 employing the general teachings of the specification (i.e., employing monoalkylamines) and choosing a starting material having a ring halogen substituent in a manner analogous to the choosing of the starting materials having ring methyl substituents in examples 11 and 12". (His references to the claims are, of course, to the proposed claims.) (at p536)

13. Much of this material is purely argumentative, and not admissible in evidence, and I refer to it only because it conveniently serves to set out some of the contentions on which the appellant relies. The decision of the matter really depends on a comparison between the claims in the complete specification and the matter set out in the first basic application, and Mr. Pickering's evidence is admissible in so far as it furnishes me with the necessary scientific knowledge to enable me to understand the meaning and scope of the technical expressions used in both documents. (at p537)

14. Professor Dahn in his affidavit first directs himself to the question whether an expert is able to manufacture nortriptyline based on the disclosure in the first basic application and considering his general professional knowledge on 8th February 1961. He answers this question by saying that the manufacture of nortriptyline is clearly described to the expert in the first basic application. In reaching this conclusion he relies on the fact that in the first basic application methylamine is specifically mentioned as one of the amines suitable for the final step in the reaction. He then considers two formulae of compounds within claim 2 in one of which there is no substitution in the aromatic nucleus and in the other of which halogen is a substituent, and expresses the view that the manufacture of the compounds described by these formulae is clearly described to the expert in the first basic application. The respondent supported the admissibility of this evidence by a reference to Terrell on Patents, 11th ed. (1965), at p. 132, where it is said :

"An expert may be asked, and may answer, the hypothetical
question whether an examination of the prior documents would
have made the invention obvious to him, but such evidence
carries little weight, for apart from its hypothetical nature the
selection of prior documents has usually been deliberately
made for the purposes of an action and the mind of an expert
is not the proper criterion for judging whether there is an
inventive step."

15. On an application against a direction of the Commissioner to amend a specification, the question for the Appeal Tribunal is not whether it is clear that the specification without the amendment required by the Commissioner is in accordance with the Act but whether it is clear that the specification without that amendment is not in accordance with the Act. In other words the Court applies the same principle that governs an appeal against a refusal to accept a specification and it does so because a direction to amend under s.49 is tantamount to a refusal to accept, and a refusal is final whereas an acceptance is not - Hopman v. Commissioner of Patents [1960] HCA 48; (1960) 103 CLR 24, at p25 ; Re Minnesota Mining and Manufacturing Co.'s Application [1961] HCA 82; (1961) 108 CLR 651, at pp 655-656 . The question in the present case, precisely stated, is, therefore, whether it is clear that the claims in the specification as proposed to be amended, without the further amendment directed by the Commissioner, are not fairly based on matter disclosed in the first basic application. (at p538)

16. The question whether a claim in a complete specification is fairly based on matter disclosed in the provisional specification was considered by the Patents Appeal Tribunal, constituted by Lloyd-Jacob J., in Re Mond Nickel Company Ltd.'s Application (1956) RPC 189, at p 194 and Imperial Chemical Industries Ltd.'s Application (1960) RPC 223, at p 228 . The test to be applied is expressed in the Act in identical language in relation to provisional specifications and basic applications and what was said in those cases is applicable to the question that arises under ss. 141 and 142 of the Act. Lloyd-Jacob J. did not attempt to define all that is meant by the phrase "fairly based" but he gave a guide to the approach that should be made in deciding a question of this kind. In his opinion it is necessary to investigate three questions which, if one substitutes a reference to the basic application for a reference to the provisional specification, he finally formulated as follows :

(1) Is the alleged invention as claimed broadly (i.e. in a
general sense) described in the basic application?
(2) Is there anything in the basic application which is
inconsistent with the alleged invention as claimed?
(3) Does the claim include as a characteristic of the invention
a feature as to which the basic application is wholly
silent?

17. In my opinion it is clear enough that proposed claims 2, 3 and 4 of the complete specification are based on matter disclosed in the first basic application. Clearly the first basic application disclosed a class of chemical compounds, including those described in proposed claims 2, 3 and 4, characterized by manifold effects on the nervous system and useful for pharmaceutical purposes. It disclosed also the manner in which the compounds could be made. If the right choices were made of the variables in the formula described in the first basic application, the compounds in proposed claims 2, 3 and 4 would be produced. On the other hand, the processes disclosed in the first basic application, even if limited to those on which emphasis is laid, would lead to the production, not only of the compounds mentioned in proposed claims 2, 3 and 4, but of many other compounds as well and, in these circumstances, the more difficult question arises whether the proposed claims are "fairly" based on matter so disclosed. (at p539)

18. On behalf of the respondent, it was said that the test is one of foresight and not of hindsight; that, is, it is not enough that, knowing the formula for, e.g., nortriptyline, one can say retrospectively that the first basic application discloses it, but it is necessary that the first basic application should lead the reader, who does not know anything about nortriptyline, to the production of that compound. It was submitted that the compound as such should be disclosed in the first basic application. However, in the respondent's submission the first basic application requires a selection to be made, at each stage of the process, of one or other of the variables and this process of selection involves a fresh inventive step so that, e.g., nortriptyline is a new and separate invention and not fairly within, or fairly foreshadowed by, the first basic application. (at p540)

19. Particular reliance was placed by the respondent on May & Baker Ltd. v. Boots Pure Drug Co. Ltd. (1948) 65 RPC 255; (1948) 66 RPC 8; and (1950) 67 RPC 23 . In that case a patent, founded on Swiss applications, claimed the manufacture of a very large class of chemical bodies known as sulpha-thiazoles and the specification stated that these bodies had chemotherapeutic activity in certain cases. The patentees had to admit that this statement could not be substantiated for the class in general and applied for leave to amend the specification so that in effect it claimed only two of the sulpha-thiazoles which had been specifically mentioned as examples in the specification and whose therapeutic properties had there been described in detail. Jenkins J. held that the patent was bad, inter alia, for want of subject matter, since the claim covered substances which were not useful, and he held that the patent must be revoked. From this part of his decision there was no appeal. He further held that leave to amend the specification must be refused since in its amended form it would claim an invention substantially different from that claimed in its unamended form and also from that disclosed in the convention applications, and on appeal the Court of Appeal and (by a majority) the House of Lords upheld this decision. This case depended on the view that the two therapeutic drugs did not constitute substantially the same invention as a vast range of possible compounds, particularly when the therapeutic value of the two drugs depended on special features not common to the group (see particularly per Lord Simonds (1950) 67 RPC, at pp 32 and 34 ). The clear ground of distinction between the facts of that case and the present is that there the original claim was for a large class, all whose members were said to have therapeutic value, whereas it was discovered that only some members of the class had that value. In this case there is no suggestion at the present stage that the claim in the first basic application as to the utility of the compounds is false and there is therefore no ground for the submission that there is a fresh inventive step involved in selecting out of the class those compounds that are of utility. Counsel for the respondent referred to a passage from the judgment of Lord Cranworth in Ralston v. Smith [1865] EngR 268; [1865] EngR 268; (1865) 11 HLC 223, at pp 252-253 [1865] EngR 268; (11 ER 1318, at p 1329) which was cited by Lord Morton in the May & Baker Case (1950) 67 RPC, at p 47 . Lord Cranworth said:

"What the plaintiff here has done is this: He has filed a
specification, which I may say is in this sort of algebraical
form: 'My specification consists of A,B,C,D, and all the
letters of the alphabet, and any combination of all the letters
of the alphabet.' But it turns out that nothing will really
meet his case but the combination of F and Z together. Now,
no doubt when he had said 'I claim a combination of all the
letters of the alphabet', a combination of F and Z would be
included; but it would be trifling with the knowledge of
mankind to say that that sort of specification would communicate
anything. It is true that by trying and puzzling over all
possible combinations you might have found out the particular
combination upon which alone the plaintiff could have relied;
but that is not what the words would properly mean, and not
what any authority warrants you in taking as their proper
meaning."

20. Some argument was devoted to the question whether it is necessary for an applicant for a chemical patent to disclose by way of examples his best chemicals but for present purposes it is enough to say that the fact that the compounds now claimed do not form the subject of examples in the first basic application does not mean that the claims are not fairly based on matter disclosed in the first basic application. Further, the fact that some of the compounds are exemplified in the second and third basic applications does not mean that the claims to those compounds are not fairly based on matter disclosed in the first basic application. (at p542)

21. Turning now to the questions suggested by Lloyd-Jacob J., in my opinion the alleged invention as claimed in proposed claims 2, 3 and 4 is described in a general sense in the first basic application. There is a clear disclosure of a class of compounds - albeit a very large class - all whose members are said to have the same pharmaceutical value and none of the compounds now specially claimed is said to be selected by reason of any particular advantage it is supposed to possess. The description of the class does, in my view, in these circumstances, include in a broad or general sense all the compounds contained in the class. The second question must clearly be answered in the negative because there is nothing in the first basic application inconsistent with proposed claims 2, 3 and 4 in the complete application. Those proposed claims result from the selection of variables left open by the first basic application and do not incorporate any element which the first basic application excludes or include any element which the first basic application does not contemplate. As to the third question, it was submitted by the respondent that the proposed claims include a feature as to which the first basic application is wholly silent, viz. the particular combination of variables to be selected. In my opinion, however, it is not right to suggest that the first basic application is wholly silent as to these matters when it includes, as possible combinations, the combinations selected to make up proposed claims 2, 3 and 4. (at p542)

22. It seems to me that the lines of investigation suggested by Lloyd-Jacob J. lead to the conclusion that proposed claims 2, 3 and 4 in the complete specification are fairly based on matter disclosed in the first basic application. It is crucial, in my view, that it is not suggested that the compounds the subject of proposed claims 2, 3 and 4 have been selected because they have any special utility. If a basic application disclosed a large class of compounds, all of which were claimed to be of pharmaceutical utility, and it were found that the claim was false, in that only some of the compounds were useful, or it appeared that some of the compounds had a particular and peculiar value, there would be much to be said for the view that a claim limited to those compounds selected for their utility or special value would not be fairly based on matter disclosed in the basic application, at least if the basic application did not itself provide a guide to that selection, and a fresh inventive step were necessary to enable it to be made. Here however a large class of compounds is disclosed, and clearly disclosed, in the basic application, and proposed claims 2, 3 and 4 in the complete specification are for compounds forming part of that class, but not selected because they alone are useful or because they have utility greater than that of other members of the class. (at p543)

23. For the reasons given I hold that it is at the least not possible to say that it is clear that proposed claims 2, 3 and 4 in the specification as proposed to be amended are not fairly based on matter disclosed in the first basic application. The same result follows in relation to all the proposed claims whose priority dates are in question. (at p543)

24. It was submitted on behalf of the respondent that although the Appeal Tribunal exercises an independent discretion under the Act due weight ought to be given to the opinion of the Commissioner or the Supervising Examiner as that of a skilled and experienced person, in the same way that weight is attached to the opinion of the Registrar or Deputy Registrar in Trade Mark cases - see Eclipse Sleep Products Inc. v. Registrar of Trade Marks [1957] HCA 86; (1957) 99 CLR 300, at p 308 ; and Joseph Bancroft & Sons Co. v. Registrar of Trade Marks [1957] HCA 87; (1957) 99 CLR 453, at p 457 . Although I am inclined to agree with this submission as a generality it does not afford me much assistance in the present case where there is no conflict of testimony as to a fact of a technical kind, and no scientific question really in controversy. (at p543)

25. The only other authority to which I need refer is Glaxo Group Ltd.'s Application (1968) RPC 473 , in which the issue arose as to whether a claim to a process of reacting a steroid, of a certain general formula in which a number of radicals were identified, with a phosphoric acid compound under specified conditions, was fairly based on a provisional specification which referred to the reaction but described the group of steroids in general terms. It was held that the claim was fairly based on matter disclosed in the provisional specification and Lloyd-Jacob J. said (1968) RPC, at p 480 :

"The interval of time between the filing of the two specifications
is intended to provide an opportunity for the development
and precise expression of the invention foreshadowed in the
provisional and where as here the provisional expresses the
invention in terms of general applicability to a specified series
of steroids, reference in the complete to new introductions in
such steroid series confirms the general applicability, conforms
with the expression of the invention in the provisional, and
finds the justification for its presence, not in any particular
characteristic of its own, but in its membership of the class of
substances to which the applicants' process was stated to be
applicable."

26. I, therefore, hold that the objection of the supervising examiner on the ground that some of the priority dates indicated by the appellant were not the priority dates of the claims as determined by the Act was not well-founded. (at p544)

27. The second question in issue is whether the proposed amendments were made for the purpose of removing a ground of objection. If the proposed amendments were not made for that purpose the supervising examiner was right in holding that they were not allowable, although it would be open to the appellant to seek leave to amend in accordance with the procedure laid down in Pt VIII of the Act. (at p544)

28. This question may be considered by taking as an example proposed claims 43 to 46. Proposed claim 43 is a claim for a process for the manufacture of preparations having activity on the central nervous system, incorporating the compounds described in proposed claim 1. It is identical with claim 6 of the specification as originally lodged, except that claim 6 states no priority date and proposed claim 43 shows 24th January 1962 as the priority date. The supervising examiner has allowed this amendment. However, proposed claims 44 to 46 are for processes incorporating the compounds described in proposed claims 2, 3 and 4 respectively and they all show 8th February 1961 as the priority date. Quite apart from the question of the correctness of the priority date, the supervising examiner has held these amendments to be not allowable. (at p544)

29. The examiner objected to the complete specification in its original form on the ground that the claims were not priority dated. To remove this objection, it was of course necessary to show the priority dates. On behalf of the respondent it is submitted that this objection could have been removed, so far as it related to claim 6, simply by adding a priority date, as in fact was done (with the addition of a renumbering of the claim) by proposed claim 43. However, the submission on behalf of the appellant is that claim 6 covered some processes (those within proposed claims 44 to 46), for which the earlier priority date could be claimed and others whose priority date was that of the lodgment of the complete specification. It was, therefore, said that the objection could not have been removed simply by adding to claim 6 a reference to 24th January 1962 as the priority date, because some of the processes within claim 6 were entitled to an earlier priority date. Accordingly it was submitted that it was right to add the new proposed claims showing the earlier priority date, although it was conceded that in strictness proposed claim 43 should have excluded the claims that fell within proposed claims 44 to 46. (at p545)

30. The view taken by the supervising examiner in upholding the objection depends on the fact that after the proposed amendments have been made and the new proposed claims 44 to 46 have been added the original claim remains unaltered except for the inclusion of the priority date. This fact, it was said, shows that the ground of objection is completely removed simply by adding the priority date. (at p545)

31. However, in my opinion, the purpose of the proposed amendments was to remove the ground of objection in the Examiners' adverse report. To remove that objection it was necessary to state a priority date. If the appellant in making an amendment were restricted to the mere addition of a date it would be in an evident difficulty. If it showed the date as 24th January 1962, it would, in respect of some subject matter, be asserting a priority date later than that to which it claimed to be entitled. If it showed the date as 8th February 1961, it would, in respect of some subject matter, be asserting a priority date earlier than that which it could hope to sustain and would be inviting a further objection on the ground that the claim was wrongly dated. The way of escape from this difficulty was to split the claims and to attribute appropriate priority dates to the different subject matters. The purpose of inserting, by amendment, the proposed claims 44 to 46 was, therefore, to remove the objection that claim 6 was not priority dated. If, at the same time, claim 6 had been amended by excising the subject matter that fell within proposed claims 44 to 46 this could hardly have been controverted. But the failure to amend claim 6 in that way does not alter the purpose for which the amendments were made. The objection that they were not made for the purpose of removing a ground of objection therefore fails. (at p545)

32. I allow the appeal. I declare that the objections based on s. 47 (2) and s. 49 (4) of the Act are not lawful objections to the grant of the application, and order that the direction of the supervising examiner given on 17th June 1966 be vacated. (at p546)

ORDER