5.4 Claims comprising technical and non‑technical aspects
It is legitimate to have a mix of technical and "non-technical" features appearing in a claim, and the non-technical features may even form a major part of the claimed subject-matter.
Inventive step, however, can be based only on technical features, which thus have to be clearly defined in the claim. Non-technical features, to the extent that they do not interact with the technical subject-matter of the claim for solving a technical problem, i.e. non-technical features "as such", do not provide a technical contribution to the prior art and are thus ignored in assessing inventive step.
In applying theThe problem-solution approach is in principle applied as follows to this type of claim, in particular for computer-implemented inventions, the steps below should be followed:
The non-technical aspects of the claim(s) are identified; a requirements specification (see G‑VII, 5.4.1
) is derived from the non-technical aspect(s) set out in the claims and the description so that the person skilled in the art of a technical field (e.g. an expert in computer science) is informed of the non-technical concept.
The closest technical
prior art is selected on the basis of the technical aspects of the claimed subject-matter and the related description, also taking into account the considerations defined in G‑VII, 5.1
The differences from the closest prior art are identified.
If there are none (not even non-technical differences), an objection under Art. 54
If the differences are not technical, an objection under Art. 56
is raised. The reasoning for the objection should be that the subject-matter of a claim cannot be inventive if there is no technical contribution to the art, i.e. if there is no technical problem solved by the claimed subject-matter vis-à-vis the closest prior art.
If the differences include technical aspects, the following applies: firstly, the objective technical problem is formulated, taking into account the requirements specification as under point (i)
above; the solution of the objective technical problem must comprise the technical aspects of the identified differences; secondly, if the solution of the technical problem is obvious to the person skilled in the art, an objection under Art. 56
Care should be taken to avoid missing any features that might contribute to the technical character of the claimed subject-matter, in particular when the wording of the claim is paraphrased for the purpose of analysis (T 756/06).