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Guidelines for Examination

 
 
5.4.1
"Requirements specification" in the formulation of the objective technical problem 

Features which do not contribute to the technical character or do not make any contribution, either independently or in combination with other features, to the technical solution of a technical problem are not relevant for assessing inventive step (see T 641/00). Such a situation may arise, for instance, if a feature contributes only to the solution of a non-technical problem, e.g. a problem in a field excluded from patentability.

Where aspects of a claim define an aim to be achieved in a non-technical field and thus do not contribute to the technical character of the invention, this aim may legitimately appear in the formulation of the objective technical problem in the form of a "requirements specification" (i.e. a complete description of the behaviour of the system to be developed) provided to the person skilled in a technical field as part of the framework of the technical problem that is to be solved, in particular as a constraint that has to be met. If no such objective technical problem is found, the claimed subject-matter does not satisfy at least the requirement for an inventive step because there can be no technical contribution to the art, and the claim is to be rejected on this ground.

The objective technical problem must be so formulated as not to contain pointers to the technical solution, since including part of a technical solution offered by an invention in the statement of the problem must, when the state of the art is assessed in terms of that problem, necessarily result in an ex post facto view being taken of inventive activity. The requirements specification is not deemed to belong to the prior art; it is merely used in the formulation of the technical problem.