We are currently developing a new site to host the Patent Manual of Practice and Procedure. The BETA version of this site is now available for you to review. The information and content displayed in the BETA site is only available for testing purposes. Do not use or reference the information in the BETA site when making any decisions or actions regarding IP rights. Obvious Combinations of Features of Common General Knowledge

Date Published

Section 7 provides for an objection of lack of inventive step to be based on common general knowledge alone.

Where the claimed invention is directed to a particular combination of features, an objection of lack of inventive step applies if the combination is obvious to the person skilled in the art having regard to the common general knowledge.

The claimed combination must be considered as a whole. It is insufficient to dissect a claimed invention into component integers and establish that these integers are each pieces of common general knowledge. Examiners must also establish that the selection of those integers is obvious to the person skilled in the art in the context of solving the problem:

"The proper question is not whether it would have been obvious to the hypothetical addressee who was presented with an ex post facto selection of prior specifications that elements from them could be combined to produce a new product or process. It is rather whether it would have been obvious to a non-inventive skilled worker in the field to select from a possibly very large range of publications the particular combination subsequently chosen by the opponent in the glare of hindsight and also whether it would have been obvious to that worker to select the particular combination of integers from those selected publications. In the case of a combination patent the invention will lie in the selection of integers, a process which will necessarily involve rejection of other possible integers. The prior existence of publications revealing those integers, as separate items, and other possible integers does not of itself make an alleged invention obvious. It is the selection of the integers out of, perhaps many possibilities, which must be shown to be obvious. ... The opening of a safe is easy when the combination has been already provided."

Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Limited (1980) 144 CLR 253 at page 293.

Back to top