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2.5.2.5.6 Inventive Step Objections Involving a Combination of Documents

Date Published

In order to establish lack of an inventive step based on a combination of documents, there must be some suggestion or motivation, either in the documents themselves or in the knowledge generally available to the person skilled in the art, to combine the disclosures of the documents.  Where the motivation to combine the disclosures of the documents is not immediately apparent, examiners must explain why the disclosures may be properly combined.

Generally speaking, it would be reasonable to combine a well-known text book or standard dictionary with a prior art document, since this is only a special case of the general proposition that it is permissible to add common general knowledge to a document to demonstrate a lack of inventive step. It would also be reasonable to combine the disclosures of two prior art documents, one of which contained a direct and unmistakable reference to the other.

In all other cases involving a combination of documents, examiners will need to provide reasoned argument as to why, in light of the problem faced by the person skilled in the art, the skilled person would be motivated to combine the disclosures of the documents.

Note: This approach must be followed and it is recommended that examiners use PERP codes such as [F68] and [F69], or similar wording, when formulating their reasons as to why the person skilled in the art would be motivated to combine the disclosures of multiple documents.

Further Report

At further report, examiners will have to consider whether an objection should be maintained in view of the circumstances pertaining to the combining of the documents. For example, if two or more documents have features which, from the point of view of combining the documents, would appear inherently incompatible, then the person skilled in the art would not ordinarily be expected to have combined them. In contrast, if there are features in the documents that makes their combination inherently desirable, then the converse will apply.

Other circumstances which may have a bearing on whether the person skilled in the art could be reasonably expected to combine particular documents and which may be raised in response to a report are:

  • the number of documents to be combined. Very often the more documents to be combined, the less likely it is that it would be reasonable to combine them;

  • the combination would be in conflict with teaching elsewhere in the art;

  • the combination would involve a change to the principle of operation of any of the elements of the combination;

  • the mere fact that documents can be combined does not render the resultant combination reasonable, unless the prior art suggests the desirability of the combination; or

  • the disclosures of the prior art do not provide a sufficient basis for a reasonable expectation of success.

Note:  These circumstances may require appropriate evidence to substantiate - see 2.13.5 Stringency of Tests During Examination.

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