Modern PS approach

Question 1

First stage?

Answer 1

A) Identifying the closest prior art

Question 2

First step of the first stage?

Answer 2

A1) The first step is identifying the aim or purpose of the claimed invention, i.e., the aim (or object or field) of the subject-matter of the claim to be attacked;

Question 3

Second step of the first stage?

Answer 3

A2) Identifying the prior art document[5] having the same aim or purpose as the claimed subject-matter, or at least belonging to the same field. If there is only one such document, this document is the closest prior art (CPA);

Question 4

Third step of the first stage?

Answer 4

A3) If two or more documents are available which have the same aim as the claim to be attacked, the document which forms ‘the most promising springboard’ to arrive at the claimed subject-matter is selected as the CPA, for instance the document having the most features in common.

Question 5

Second stage of PS

Answer 5

B) Formulating the objective technical problem

Question 6

First step of Second stage of PS

Answer 6

B1) Showing which features of the attacked claim are anticipated by the CPA. In other words, a partial novelty attack is presented against the attacked claim. More precisely, a novelty attack based is presented, using the CPA as novelty destroying for some but not all of the claim features. The ‘remaining’ features which provide for novelty of the claim are the distinguishing features of step B2;

Question 7

Second step of second stage

Answer 7

B2) Identifying the feature of the claim which provides for novelty of the claim over the CPA as the distinguishing feature of the claim over the CPA (in case of two or more distinguishing features, see §3 below);

Question 8

Third step of second stage

Answer 8

B3) Discussing whether the CPA simply lacks the distinguishing feature or if it uses some other feature instead (the latter is important for step B4);

Question 9

Fourth step of second stage

Answer 9

B4) Identifying the technical effect that is (actually) achieved by the distinguishing feature (as identified under B2) in comparison to the CPA. This technical effect must also be derivable from the application as filed;[7]

Question 10

Fifth step of second stage

Answer 10

B5) Formulating the objective technical problem as ‘how to modify the closest prior art to achieve the technical effect’ (or, if no technical effect is achieved over the CPA, as ‘providing an alternative to the CPA’, see §3).

Question 11

Third stage

Answer 11

C) Obviousness
In stage C, it is shown that modifying the CPA with the distinguishing feature is an obvious solution to the objective technical problem in view of a second document (referred to as D2),

Question 12

First step of third stage

Answer 12

C1) Showing that the skilled person trying to solve the objective technical problem would consult the second document D2;

Question 13

Second step of third stage

Answer 13

C2) Showing that the second document D2 discloses a feature F which is the same as the distinguishing feature of the attacked claim or a more specific embodiment of the distinguishing feature

Question 14

Third step of third stage

Answer 14

C3) Showing that the second document D2 provides a motivation for the skilled person to apply feature F specifically for solving the objective technical problem, typically by showing that D2 teaches that the feature F solves the objective technical problem;

Question 15

Fourth step of third stage

Answer 15

C4) Explaining that there are no technical obstacles for applying feature F in the context of the CPA (e.g., no incompatibility of the teachings of D2 and the CPA)[9] and discussing that the skilled person would make any further modifications of the CPA that are required to arrive at the subject-matter of the claim (e.g., make any necessary workshop modifications);

Question 16

Fifth step of third stage

Answer 16

C5) Concluding that the skilled person therefore (not only could, but) would have modified the CPA with feature F to solve the objective technical problem, showing that the skilled person thereby would have arrived at something falling within the ambit (i.e., subject-matter) of the claim under consideration, and concluding that the claimed subject-matter is therefore obvious and does not involve an inventive step (Article 52 and 56 EPC).