Non-Essential Features of the Invention Claimed

Date Published

The various tests for obviousness refer to whether "the invention" is obvious. As discussed in 2.4.8 Not All Features of Claim Disclosed in Citation, not all the features of a claim are necessarily essential features of the invention claimed.

If in novelty considerations a claimed feature is found to be inessential, that feature cannot give rise to an inventive step in the claimed invention. Thus examiners should disregard any inessential features of the invention claimed when considering inventive step.

Where an objection of lack of inventive step is taken in these circumstances, examiners will need to explain why they have considered a feature as inessential.