2.2 Subject-matter excluded from patentability under Art. 52(2) and (3)
Subject-matter or activities listed in Art. 52(2), when taken as such (Art. 52(3)), are considered non-technical (G‑II, 1 and 2). In case of a claim containing a mix of technical and non-technical features, the examiner identifies which features contribute to the technical character of the claimed subject-matter (see G‑VII, 5.4). The search covers all features that are found to contribute to the technical character.
Features that appear to be non-technical when taken in isolation may nonetheless contribute to the technical character of a claimed invention if, in the context of that invention, they contribute to produce a technical effect serving a technical purpose. The mere implementation of effects that are inherent in the excluded matter (T 1543/06) or result from circumvention of the technical problem rather than contributing to a technical solution would not qualify as technical effects (T 258/03). Examples of how to evaluate contribution to technical character for each of the items listed in Art. 52(2) are provided in G‑II, 3.1-G-II, 3.7.
Claimed features are analysed in the light of the description and drawings to determine if they produce a technical effect and form part of a technical solution to a technical problem (in accordance with B‑III, 3.2, and B‑IV, 1.1). In particular, specific embodiments of the application disclosed in its description and drawings, to which the claims might reasonably be expected to be limited, are taken into account since they could confer technical character on the claimed features (B‑III, 3.5).
If the examiner considers that some claim features do not contribute to the technical character of the claimed invention, this should be indicated in the search opinion. If a lack of inventive step objection is raised where at least some of the distinguishing features are found not to have a technical effect contributing to the solution of a technical problem as set out in G‑VII, 5.4, this finding is substantiated.