9.1.3 Problem and solution approach when applied to "mixed" inventions
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The boards of appeal use the problem and solution approach to determine whether an inventive step is involved. This requires analysis of the invention in terms of a technical solution to a technical problem. Since both the solution and the problem solved by an invention have to be of a technical nature, the problem and solution approach might raise questions when the invention comprises non-technical aspects or elements. Such difficulties are to be resolved by taking due care to define the technical field to which the invention belongs, the scope of technical expertise and skills expected to be applied by the technical person in that particular technical field, and the correct formulation of the technical problem actually solved (T 1177/97). Such an approach must necessarily differentiate between technical and non-technical features when applied to "mixed" or hybrid inventions (T 1543/06).
- T 1082/13
1. The assessment of technical character of a claim does not require a reference to the prior art following the established "whole contents approach" (see reasons, point 1.1).
2. A "timeout" condition claimed in general and broad terms that cover non-technical interpretations is in the domain of the non-technical person and part of the requirements specification given to the technical expert for implementation on a computer system (see reasons, point 2.4).
3. The "notional business person", as introduced in T1463/11, is to be interpreted within the framework of the well established COMVIK-approach according to T0641/00. Consequently, the notional business person knows all about the business related requirements specification and knows about the fact that such business related concepts can be implemented on a computer system. The choice of where to do a calculation in a distributed system is not necessarily technical, but can also be driven by administrative considerations. What the notional business person does not know, however, is how exactly it can be implemented on a computer system. This is in the sphere of the technical expert and subject to the assessment of inventive step.
4. When referring to prejudices, it has to be carefully analysed, whether it is actually a technical prejudice or, in fact, a business prejudice (e.g. just a new way of organising a business transaction that goes against traditional ways of organising it - see reasons, point 4.8).