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Guidelines for Examination in the EPO

 
 
Guidelines for Examination - Table of Contents  
Part C Guidelines for Substantive Examination PART B PART D  
Chapter IV Patentability Chapter III Claims Chapter V Priority  
11. Inventive step 10. Non-prejudicial disclosures    
11.6 Combining pieces of prior art 11.5 Problem-and-solution approach 11.7 Combination vs. juxtaposition or aggregation  


11.6 Combining pieces of prior art

 

In the context of the problem-solution approach, it is permissible to combine the disclosure of one or more documents, parts of documents or other pieces of prior art (e.g. a public prior use or unwritten general technical knowledge) with the closest prior art. However, the fact that more than one disclosure must be combined with the closest prior art in order to arrive at a combination of features may be a sign of the presence of an inventive step, e.g. if the claimed invention is not a mere aggregation of features (see C-IV, 11.7).

 

A different situation occurs where the invention is a solution to a plurality of independent "partial problems" (see IV, 11.7 and 11.5.2). Indeed, in such a case it is necessary to separately assess, for each partial problem, whether the combination of features solving the partial problem is obviously derivable from the prior art. Hence, a different document can be combined with the closest prior art for each partial problem (see T 389/86, OJ 3/1988, 87). For the subject-matter of the claim to be inventive, it suffices however that one of these combinations of features involves an inventive step.

 

In determining whether it would be obvious to combine two or more distinct disclosures, the examiner should also have regard in particular to the following:

 

(i)

whether the content of the disclosures (e.g. documents) is such as to make it likely or unlikely that the person skilled in the art, when faced with the problem solved by the invention, would combine them - for example, if two disclosures considered as a whole could not in practice be readily combined because of inherent incompatibility in disclosed features essential to the invention, the combining of these disclosures should not normally be regarded as obvious;

  

(ii)

whether the disclosures, e.g. documents, come from similar, neighbouring or remote technical fields (see C-IV, 11.3);

  

(iii)

the combining of two or more parts of the same disclosure would be obvious if there is a reasonable basis for the skilled person to associate these parts with one another. It would normally be obvious to combine with a prior-art document a well-known textbook or standard dictionary; this is only a special case of the general proposition that it is obvious to combine the teaching of one or more documents with the common general knowledge in the art. It would, generally speaking, also be obvious to combine two documents one of which contains a clear and unmistakable reference to the other (for references which are considered an integral part of the disclosure, see IV, 7.1 and 9.1). In determining whether it is permissible to combine a document with an item of prior art made public in some other way, e.g. by use, similar considerations apply.