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Guidelines for Examination

 
 

4.5.2 Definition of essential features

Essential features of a claim are those necessary for achieving a technical effect underlying the solution of the technical problem with which the application is concerned (the problem usually being derived from the description). The independent claim(s) should therefore contain all features explicitly described in the description as being necessary to carry out the invention. Any features which, even if consistently mentioned in the context of the invention throughout the application, do not actually contribute to the solution of the problem are not essential features.

As a general rule, the technical effect or result produced by the feature will provide the key to answering the question of whether or not the feature contributes to solving the problem (see also G‑VII, 5.2).

If a claim is to a process for producing the product of the invention, then the process as claimed should be one which, when carried out in a manner which would seem reasonable to a person skilled in the art, necessarily has as its end result that particular product; otherwise there is an internal inconsistency and therefore lack of clarity in the claim.

In particular, where patentability depends on a technical effect, the claims must be so drafted as to include all the technical features of the invention which are essential for the technical effect (see T 32/82).