Guided Exercises:Inventive Step

Edoardo PastorePatent Examiner, Cluster ComputersEuropean Patent Office

Torino, 13-14 October 2011

Novelty - Example 1

Problem to be solved:- Lubricating small hinges.- In view of their small size, such hinges are difficult to lubricate.

Claimed solution:A graphite applicator for applying graphite to small hinges to lubricate them

– the applicator having a thin rod of material comprising graphite – surrounded and supported by a protective sleeve.

Answer:The subject-matter of claim is not newIt is anticipated by any pencil!!

Is the subject-matter new? Think of common knowledge.

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Novelty - Example 2

Claim 1A pot comprising a container and a perforated screw cap characterised in that it comprises - special gripping surfaces on at least one side of the container as well as- protrusions that enable it to be gripped securely when the fingers or the container are wet.

Claim 2

A pot as in claim 1, wherein the protrusions are distributed over the gripping surfaces.

Claim 3

A pot as in claim 1, wherein at least one of the sides includes concave areas.

Prior Art:A "one-shot" sugar dispenser used in cafés or canteens.

Which of the claims is new?

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Example 2 - Solution

Claim 1 container

perforated cap

special gripping surfaces on the container

protrusions

Claim 2 protrusions distributed over the gripping surfaces

Claim 3 side with concave features

Feature Analysis:

x

x

x

x

x

x

=> not new

=> not new

=> not new

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Novelty -Example 3

Claims

1. A set of sliding doors for a container which can contain a television or a similar electronic device, characterised in that

- the doors are made of a series of closely adjacent vertical slats, - each being attached to adjacent slats, - the top and bottom ends of the slats being guided respectively by top and bottom guiding means in such a way as to permit the doors to open or to close the front of the container.

2. Doors as in claim 1, in which the guiding means are slots.

3. Doors as in claim 1, in which the slats are made of the same material as the container.

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Novelty - Example 3

Prior Art:

A picture of an aircraft hanger with sliding, slat doors running on small wheels. The wheels slide along horizontal guiding lines positioned at the top and the bottom of the doors.

Which of the claims is new?

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Claim 1

container

in which a TV set can be placed

with sliding doors

doors are made of slats

each slat is flexibly attached to the next one

container comprises top and bottom horizontal guiding means

top and bottom ends of the slats are guided by these means to be moved sidewise...

Claim 2

the guiding means are slots

Claim 3

slats of the same material as the container

Feature Analysis:

x

x

x

x

x

x=> not new

=> new

=> new

x

-

-

Example 3 - Solution

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Novelty - Example 4

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Claim:

A pot comprising- a compartment (1) and,- two spouts (5) extending from the compartment (1).

Novelty - Example 4

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The search into the prior art revealed the following documents:

Document D3:a filter handle with two spouts to be used with an coffee maker.

Document D2:A pot for planting herbs

Document D4:an oil and vinegar bottle which reveals a second bottle inside. The two spouts are cleverly arranged to ensure the second never drips while the first is in use.

Novelty - Example 4

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Claim:

A pot comprising- a compartment (1) and,- two spouts (5) extending from the compartment (1).

for carrying liquids

Inventive Step - Question 1

Is it allowed to combine documents for arguing inventive step?

Answer?

Yes.

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+ ?

Inventive Step - Question 2

Does it matter which of the documents you use as the starting point for the problem-and-solution approach?

Answer?

Yes. It has to be the closest prior art to objectively assess inventive step.

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+D1

D2

+D1D2

Inventive Step - Question 3

Is the problem-and-solution approach systematically based on the prior art mentioned in the application?

Answer?

No. It is based on the closest prior art document. Prior arts documents are revealed by a search into the prior art.

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Inventive Step - Question 4

Is the fact the part of the features are present in one prior art, while all the remaining features are disclosed in another document enough to proof lack of inventive step?

Answer?

No. It has be demonstrated that the skilled person would combine these documents and thereby come to the invention.

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Inventive Step - Question 5

Can a claim, which is not novel, be inventive?

Answer?

No. The presence of an inventive step requires that the claim contains at least one technical feature which is not present in the closest prior art.

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Example 1

Claim 1 (as filed)A pair of tights with a body portion characterized in that the pair of tights comprises three leg portions.

Document D2 A leg garment comprising

two separate stocking portions

Document D1 A conventional pair of tights with two leg portions

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Feature analysis - Example 1

application prior artrior Art Prior Artclaim 1 doc. D1 doc. D2 etc.features:

A

B

C

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tights

body portion

3 legs

Application of the problem/solution approach - Example 1

Closest prior art:

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The closest prior art is described in D1.

Difference:

The difference between claim 1 and the closest prior art is the provision of a spare leg portion.

Objective technical problem:

How to provide a pair of tights wherein a damaged leg portion can quickly be substituted?

Application of the problem/solution approach - Example 1

Obviousness:

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Is the objective technical problem addressed in D2?

So, the skilled person would consider D2 when searching through the available prior art for a solution to the problem posed.

YES.

Does D2 propose a similar solution as claimed?

NO.

D2 provides a different solution to the problem than that suggested by claim 1 of the application.

Claim 1 involves an inventive step.

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Example 2

Claim 1 (as filed)A pair of tights with a body portion characterized in that the pair of tights comprises three leg portions.

Document D1 A conventional pair of tights with two leg portions

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Document D3 A glove with six fingers – addressing the same problem as the claimed invention

Application of the problem/solution approach - Example 2

Closest prior art:

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The closest prior art is described in D1.

Difference:

The difference between claim 1 and the closest prior art is the provision of a spare leg portion.

Objective technical problem:

How to provide a pair of tights wherein a damaged leg portion can quickly be substituted?

Application of the problem/solution approach - Example 2

Obviousness:

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Is the objective technical problem addressed in D3?

So, the skilled person would consider D3 when searching through the available prior art for a solution to the problem posed.

YES.

Does D3 propose a similar solution as claimed?

YES.

D3 provides the same solution (provide extra portion) to the problem as claim 1. It is applied to a different body member. However, the skilled man departs from the correct member, i.e. starting point is D1.

Claim 1 does not involve an inventive step.

+

Example 3 – microwave oven

Claimed Invention:An oven which comprises a magnetron for heating food.

State of the art:

1. Electrical and gas ovens for heating food.

2. In radar technology, it is known to use an electron tube for generating microwaves.

Inventive Step?

Yes. The person skilled in the art does not find any stimulus or hint in the prior art to apply a magnetron for heating food.

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Example 4 – Framework of Beams

State of the art:Support structures with a framework of beams are known in the state of the art. Usually, the beams are made of steel.

Invention:A support structure with the same framework of beams whereby the beams made of aluminium to make it lighter.

Inventive Step?

No. The skilled person knows that aluminium is used for making any kind of structure or pieces lighter.

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Any Questions?

Thank you

for your attention!

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