While the claim should in each case be directed to technical features (and not, for example, merely to an idea), in order to assess whether an inventive step is present it is important for the examiner to bear in mind that there are various ways in which the skilled person may arrive at an invention. An invention may, for example, be based on the following:
(i)
the formulation of a new idea or of a yet unrecognised problem to be solved (the solution being obvious once the problem is clearly stated);
Example: Appropriate tests by the applicant revealed that the effect of a known chemical formulation was no longer satisfactory after prolonged storage, the claimed solution being retrospectively trivial and in itself obvious (see T 2/83, OJ 6/1984, 265).
(ii)
the devising of a solution to a known problem;
Example: the problem of permanently marking farm animals such as cows without causing pain to the animals or damage to the hide has existed since farming began. The solution ("freeze-branding") consists in applying the discovery that the hide can be permanently depigmented by freezing.
(iii)
the arrival at an insight into the cause of an observed phenomenon (the practical use of this phenomenon then being obvious);
Example: the agreeable flavour of butter is found to be caused by minute quantities of a particular compound. As soon as this insight has been arrived at, the technical application comprising adding this compound to margarine is immediately obvious.
Many inventions are of course based on a combination of the above possibilities - e.g. the arrival at an insight and the technical application of that insight may both involve the use of the inventive faculty.
CHAPTER IV PATENTABILITY
9.5 Combination vs. juxtaposition or aggregation
9.7 (deleted)
