Guidelines for Examination
PART C
CHAPTER IV PATENTABILITY
CHAPTER IV Annex EXAMPLES RELATING TO THE REQUIREMENT OF INVENTIVE STEP INDICATORS (see IV, 9.13)
1. Application of known measures?
1.2 Inventions involving the application of known measures in a non-obvious way and in respect of which an...
 

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PART C
CHAPTER IV PATENTABILITYCHAPTER IV PATENTABILITY
CHAPTER IV Annex EXAMPLES RELATING TO THE REQUIREMENT OF INVENTIVE STEP INDICATORS (see IV, 9.13)CHAPTER IV Annex EXAMPLES RELATING TO THE REQUIREMENT OF INVENTIVE STEP INDICATORS (see IV, 9.13)
1. Application of known measures?1. Application of known measures?
  1.1 Inventions involving the application of known measures in an obvious way and in respect of which an...1.1 Inventions involving the application of known measures in an obvious way and in respect of which an...       
 

1.2

Inventions involving the application of known measures in a non-obvious way and in respect of which an inventive step is therefore to be recognised:

 

(i)

a known working method or means when used for a different purpose involves a new, surprising effect;

 

Example: It is known that high-frequency power can be used in inductive butt welding. It should therefore be obvious that high-frequency power could also be used in conductive butt welding with similar effect. However, if high-frequency power were used for the continuous conductive butt welding of coiled strip but without removing scale (such scale removal normally being necessary during conductive welding in order to avoid arcing between the welding contact and the strip), there is the unexpected additional effect that scale removal is found to be unnecessary because at high frequency the current is supplied in a predominantly capacitive manner via the scale which forms a dielectric. In that case, an inventive step would exist.

 

(ii)

a new use of a known device or material involves overcoming technical difficulties not resolvable by routine techniques.

 

Example: The invention relates to a device for supporting and controlling the rise and fall of gas holders, enabling the previously employed external guiding framework to be dispensed with. A similar device was known for supporting floating docks or pontoons but practical difficulties not encountered in the known applications needed to be overcome in applying the device to a gas holder.