Note: Examiners are reminded that negative explanations should clearly indicate, with reference to the documents listed in Box V Item 2 under “Citations and Explanations” that are relevant to the issue being discussed, the reasons supporting a conclusion that the criterion of inventive step has not been satisfied – see 6.3.8.6 Box V Reasoned Statement Regarding Novelty, Inventive Step & Industrial Applicability. Consequently, if not explicitly discussed in any of the following examples, examiners should assume that the disclosure of the primary citation (D1) has been discussed in detail earlier in the ISO, IPEO or IPRPII (such as in a reasoned explanation regarding novelty).

X Category Document Plus Common General Knowledge - No Documentary Evidence Required (single source of information)

Example 1

Claim 17 is not inventive in light of D1. Claim 17 defines an antibody that binds to the protein of SEQ ID NO: 1. D1 discloses SEQ ID NO: 1, but does not disclose the production of antibodies that bind to this protein. However, the generation of antibodies against a known protein is a standard technique and would be considered common general knowledge in the art. Therefore the production of antibodies, as defined by this claim, is not inventive in light of D1.

Example 2

Claim 3 does not involve an inventive step in light of D1 or D2 and common general knowledge. These documents each disclose a container made from a plastic material (see page 2, lines 10-15 in D1 and page 3, lines 5-8 in D2). Claim 3 differs from D1 and D2 in that the material of the container is made from polyethylene. The properties of polyethylene are so well known that the use of this material in the manufacture of the container, because of its known properties that make it suitable for this purpose, does not involve an inventive step. Therefore claim 3 is not inventive over D1 or D2 in view of common general knowledge.

Example 3

Claims 1 and 11 do not involve an inventive step in view of D1 and common general knowledge. The substitution of high-voltage electrical conductors by utilising the existing conductors as draw wires to pull the new conductors into position is very well known in the art, particularly in the substitution of underground power transmission conductors installed in conduit. It is noted that the claims have not been limited to the substitution of high-voltage power conductors of only over head high-voltage transmission lines and therefore include the substitution of high-voltage power conductors installed in conduit within their scope. Thus the subject matter of claims 1 and 11 does not meet the criteria set out in Article 33(3) of the PCT.

X Category Document Plus Common General Knowledge – Documentary Evidence Required (the document/s used to support an assertion of CGK are categorised as “A”)

Example 1

Claim 28 is not inventive in view of D1 and common general knowledge. Claim 28 defines the protein of claim 1 which has a PEG group attached. D1 discloses the protein of claim 1, but does not teach or suggest PEGylation. However it is well known in the art that PEG groups can be attached to proteins in order to improve their pharmacokinetic properties, and that this process has previously been used with many pharmaceutical proteins. For example, the following documents disclose PEGylated proteins and are representative of the state of the art: D5 (page 7, lines 23-28), D6 (column 10, lines 4-10) and D7 (page 1543, second paragraph). Claim 28 is therefore not inventive in light of D1 when combined with the common general knowledge in the art as represented by any one of D5, D6 and D7.

Example 2

Claim 1 does not involve an inventive step in view of the disclosure of D1 and common general knowledge. D1 teaches all of the claimed features with the exception of at least two equally distributed flow plates arranged on the cap of the forward propeller. The provision of equally distributed flow plates on the cap of a propeller, to achieve enhanced flow performance characteristics of the propulsion system, is considered to amount to common general knowledge within the marine propulsion art. For example, D2 teaches a propeller hub cap with two equally distributed flow plates to enhance flow performance characteristics (see the relevant text under heading of “Propeller Designs” on page 10 and figure 3 on page 11 from the Boat Design Handbook). Hence claim 1 does not involve an inventive step over D1 in view of common general knowledge as indicated in D2.

Example 3

Claims 2, 3 and 11 do not involve an inventive step in light of D1 and common general knowledge. D1 does not disclose the features of producing a printed pattern on a contact lens that is the result of overlaying a first and a second pattern, or a printed pattern of a single colour, or where the printed pattern is non-uniform. However these features are considered to be well-known in the art (see, for example, D2: paragraphs 17, 18 and 23 and D3:,paragraphs 4 and 5, one-colour Knapp lenses and the multiple-colour Jahnke lenses). Therefore the subject matter of these claims is considered to lack an inventive step with respect to the combination of D1 with common general knowledge as indicated in D2 and D3.

Y Category Documents (Mosaicing multiple documents where all documents are categorised as “Y”)

Example 1

Claim 1 is not inventive in light of D1 when combined with D2.

Claim 1 defines a method of treating ovarian cancer by using antibodies that bind to the protein of SEQ ID NO: 1.

D1 discloses the protein of SEQ ID NO: 1, but does not suggest that it is involved in cancer, nor does it suggest the use of antibodies against this protein to treat cancer. However, this document discloses that SEQ ID NO: 1 is the ligand for a membrane-bound receptor (MBR-a) that is known in the art (see page 20, lines 10-15). D2 discloses this receptor and indicates that signalling via this receptor causes certain types of cancer (including ovarian cancer) (see page 5, lines 1-25). D2 further discloses the production of antibodies against the MBR-a receptor, and the use of these antibodies as a therapeutic treatment for cancer (see page 6, lines 24-31).

Thus D1 and D2 each demonstrate a biological pathway that involves the protein of present claim 1 (SEQ ID NO: 1). Furthermore, D2 teaches that inhibition of this pathway (using, for example, antibodies against the corresponding receptor, MBR-a) can be used to treat cancer. The person skilled in the art would therefore be motivated to combine the teachings of D1 and D2 in order to provide new methods for treating ovarian cancer by inhibiting additional proteins involved in the pathway (such as the ligand of SEQ ID NO: 1). Consequently, claim 1 is not inventive in view of an obvious combination of these documents.

Example 2

Claim 6 does not involve an inventive step when the disclosure of D1 is combined with the disclosure of D2.

Claim 6 defines a masonry block in which insulating foam is sandwiched between two load bearing outer concrete layers.

D1 discloses a building block in which insulating foam is sandwiched between two outer glass layers (see page 3, lines 20-25 and figures 1-3). D2 discloses a structural beam with an insulating foam sandwiched between two outer concrete layers (see page 4, lines 15-18 and figures 4-6). The concrete layers in D2 perform the same load bearing function as the glass layers in D1 when utilised in a composite building or structural element comprising insulating foam.

It is considered that a person skilled in the art would, in seeking a solution to the problem being addressed, be motivated to combine the disclosures of D1 and D2 by substituting the glass layers of D1 with the concrete layers of D2 and thereby arrive at a solution that is the same as the claimed invention. Hence claim 6 does not involve an inventive step over the combination of D1 and D2.

Example 3

Claim 3 is not inventive in view of D3 when combined with D4.

D3 discloses that tungsten selenide is a known thermoelectric compound. However, D3 fails to disclose that the layers are substantially randomly oriented.

D4 discloses that building layers in disorder and/or forming superlattice structures decreases the thermal conductivity (see column 1, lines 34–52).

In view of D4, the problem to be solved is to decrease the thermal conductivity of thermoelectric materials. The person skilled in the art would have been motivated to combine the disclosures of D3 and D4 because of the advantages obtained from reduced thermal conductivity and thereby arrive at the claimed invention. Hence the subject matter of claim 3 is considered to lack an inventive step with respect to the combination of D3 and D4.