Wording 7 Flashcards
Inventive step stages
- ID the CPA
- Formulate the OTP
- Obviousness
- Identify the closest prior art
The PSITA is X because (GfE G-VII 3.)
The technical field is X…
The purpose of claim X is to provide “….” (see pre-amble (for), or description)
The purpose of A2 is to provide “the same effect as claim X… A2 is also in the same technical field and has many features in common. Therefore A2 is the CPA (GfE G-VII 5.1).
Whilst the purpose of A2 and A3 are the same, A2 provides a better springboard/starting point for arriving at claim X because A2 (has more features in common, more compitable, A3 teaches away…)
example: The purpose of claim 4 is to provide a multi-layered patch for treating wrinkles (A1, claim 4, preamble). The purpose of A3 is to provide “… patches … suitable for reducing the appearance of facial wrinkles (A3[0001) which is the same as the purpose of claim 4. Moreover, A3 is in the same technical field (medical patches) as claim 4 and, as shown below, A3 has many features in common with claim 4. Therefore, A3 is the closest prior art for claim 4 (GL G-VII, 5.1).
- Formulate the OTP
The CPA discloses X… [same as novelty]
The CPA fails to disclose Y because…
The feature is an alternative to…..
The technical effect of the difference is [use effect table]…
- Is there more than 1 difference… think partial problem…. Synergistical effect (see below)
- Is there more than 1 difference… think COMVIK… technical?
- Is the feature an alternative… think CGK (well-known etc…)
The OTP is how to modify the CPA the provide the technical effect…
Common variations
Partial problem - 2 or more novel features - justification for combining 3 or more docs…
COMVIK
Obvious alternative
Partial problem
Partial problem
Difference 1 is….
Difference 2 is….
The technical effect of difference 1 is….
The technical effect of difference 2 is….
The above-mentioned differences and their technical effects are not synergistically linked because…. there is no technical effect achieved by the TWO distinguishing features taken in combination.
In view of the above, the technical effects of the distinguishing features are unrelated.
Instead, a plurality of partial problems are independently solved.
The inventive step can be separately assessed in relation to the different partial problems posed (GL, G-VII, 5.2, 6, 7).
Non-technical / mix (COMVIK)
FEATURE does not contribute to the technical character of the invention.
Features which do not contribute to the technical character of the invention cannot support the presence of an inventive step (T641/00) (Guidelines for Examination G-VII, 5.2).
This feature is therefore not relevant for assessing inventive step.
If a known device is modified by adding a feature which has no technical function, this modification cannot contribute to the inventive step (T72/95 r.5.4)
SEE VISSER AND GUIDELINES G-VII, 5.4 IF SITUATION IS MORE IN DEPTH
Routine work
Routine work (p118 Visser)
SEE VISSER
- Obviousness
i. Show that the skilled person would consult D2 (same field, same effect, solves same problem)
ii. Show that D2 discloses missing feature
iii. Show that D2 discloses motivation for applying the missing feature to the CPA
iv. Explaining that there are no obstacles for combining and that the skilled person would make further modifications.
Are there any incompatibilities?
v. Concluding that the skilled person would arrive at claimed invention.
Therefore, claim # is obvious and does not involve an inventive step contrary to Article 56 EPC.
i. Show that the skilled person would consult D2 (same field, same effect, solves same problem)
ANNEX is in the same/neighbouring/broader general technical field (and concerned with problem?) (evidence)
Therefore, the skilled person would have consulted ANNEX (when faced with the objective technical problem)
The skilled person is an expert in the technical field of the problem (T422/93 hn.1, 2). Thus, they are an expert in the field of … They are knowledgeable about this technical field and will consult ANNEX because it is a document in this technical field (EVIDENCE)
The skilled person may be expected to look for suggestions in neighbouring and broader general technical fields (see T 176/84 and T 195/84) or even in remote technical fields, if prompted to do so (see T 560/89).
Show that D2 discloses missing feature
The solution to the invention is known (ANNEX + evidence of FEATURE in ANNEX + explain why it is the same)
Therefore, the skilled person could have arrived at the invention of CLAIM
iii. Show that D2 discloses motivation for applying the missing feature to the CPA
The skilled person would have recognised that FEATURE in ANNEX solves the objective technical problem because the ANNEX mentions the TECHNCIAL EFFECT of this FEATURE (evidence).
Therefore, the skilled person would have applied this FEATURE to the CPA to solve the objective technical problem.
iv. Explaining that there are no obstacles for combining and that the skilled person would make further modifications.
Are there any incompatibilities?
The solution is compatible with CPA. There are no impediments to applying the FEATURE to the CPA.
(evidence – what are things portrayed as essential in either document that on the surface appear in conflict and why can they be disregarded?)
