Guidelines for Examination
PART C
CHAPTER IV PATENTABILITY
9. Inventive step
9.11a Selection inventions
 

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PART C
CHAPTER IV PATENTABILITYCHAPTER IV PATENTABILITY
9. Inventive step9. Inventive step
  9.11 Arguments and evidence submitted by the applicant9.11 Arguments and evidence submitted by the applicant     9.12 Dependent claims; claims in different categories9.12 Dependent claims; claims in different categories  
 

9.11a

Selection inventions

 

The subject-matter of selection inventions differs from the closest prior art in that it represents selected sub-sets or sub-ranges. If this selection is connected to a particular technical effect, and if no hints exist leading the skilled person to the selection, then an inventive step is accepted (this technical effect occurring within the selected range may also be the same effect as attained with the broader known range, but to an unexpected degree). The criterion of "seriously contemplating" mentioned in connection with the test for novelty of overlapping ranges should not be confused with the assessment of inventive step. For inventive step, it has to be considered whether the skilled person would have made the selection or would have chosen the overlapping range in the hope of solving the underlying technical problem or in expectation of some improvement or advantage. If the answer is negative, then the claimed matter involves an inventive step.