9.3. Combination of teachings

In T 1014/07 the examining division considered the subject-matter of claim 1 as obvious for the reason that each of the claimed features had been disclosed in the prior art. However, the board stated that the mere existence of teachings in the prior art is not a conclusive reason for explaining that the skilled person would have combined these teachings in order to solve the problem that he or she is confronted with. For the determination of the obviousness or non-obviousness of claimed subject-matter, it is not decisive that teachings are known – it must be decided whether or not the skilled person would have combined the known teachings such as to arrive at the claimed subject-matter when attempting to solve the underlying technical problem. Thus, the combination of known teachings may result in non-obvious subject-matter, namely when the skilled person is not motivated, for example by promptings in the prior art, to make such a combination. Under these circumstances the presence of any special effect arising from the combination is not necessary to establish an inventive step.

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