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Good Day to all. I am being challenged by an IP Australia examiner that my innovation lacks subject matter. The examiner however never did classification proceding and presents 4 bits of prior art which he picks out of the blue all for which such prior art is inappropriate and not similar to my innovation.

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  • I fixed a couple of typos. Hopefully I didn't change the meaning of the question.
    – Eric S
    Commented Feb 20, 2022 at 15:53
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    “Lacks subject matter” is a strange reason for a rejection. Can you read the rejection and try to find the core reasons for rejection? Is it lack of novelty over specific prior art or lack of inventive step or lack of clarity in what is claimed? You can’t address it in a response without a clear understanding of the problem.
    – George White
    Commented Feb 20, 2022 at 16:53
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    Usually the process of initial classification is done before an examiner is assigned your application.
    – George White
    Commented Feb 20, 2022 at 16:55
  • If you like to answer from Eric you can mark it accepted.
    – George White
    Commented Jul 21, 2022 at 0:06

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First of all, I am not a lawyer, just an inventor with many patents, all of which were obtained with the help of a patent attorney. I don't know the answer to the question posed in the title of your question. The answer is likely specific to Australia. Perhaps someone else may provide a definitive answer.

What I can say is that it is very, very common to receive a rejection in the process of obtaining patent. The examiner can provide whatever prior art they want from any patent classification. Your job is to convince the examiner that the cited prior art is either not relevant or else circumvented by the application and claims. Sometimes it may be necessary to edit the claims to do this. A patent lawyer should be experienced at this. The main reason I always recommend using a patent attorney is that an inventor is much more likely to actually obtain a useful patent with an attorney than without.

So the bottom line is Don't Panic. Rejections are a normal part of the process. If the cited prior art is irrelevant than it should be relatively easy to explain to the examiner why.

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  • Adequate enough answer Commented Apr 13, 2022 at 17:52
  • Adequate enough answer Commented Apr 13, 2022 at 17:52

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