6.1.11.2 Inventive Step

Date Published

Combining the teachings of documents

In considering whether there is inventive step as distinct from novelty (see 6.1.11.1 Overview - Novelty / Inventive Step), it is permissible to combine the teachings of two or more prior art references (‘mosaic’). Said references may be, for example:

  1. different published patents

  2. several teachings contained in the same prior art reference, such as one particular book

However, it must be a combination that would be obvious to the person skilled in the art.

PCT practice

In determining whether it would be obvious to combine the teachings of two or more distinct documents, the examiner should have regard to the following (see PCT/GL/ISPE/12 at paragraph 13.12 and 5.6.6.2 Information against which inventive step is assessed): ​​​​​​​

  1. whether the nature and content of the documents are such as to make it likely or unlikely that the person skilled in the art would combine them

  2. whether the documents come from similar or neighbouring technical fields

    1. if not, then whether the documents are reasonably pertinent to the particular problem with which the invention was concerned

Paragraph ​​​​​​​13.13 of the PCT ISPE Guidelines specifies the practices of combining teachings for Inventive step considerations. In general, the inventive step consideration under the PCT is very similar to the approach used in Australian National examination (see 5.6.6.2 Information against which inventive step is assessed).

That is:

‘It would normally be obvious to combine with other prior art documents a well-known text book or standard dictionary; this is only a special case of the general proposition that it is obvious to combine the teaching of one or more documents with the common general knowledge in the art.’

For further information regarding inventive step issues related to international examination according to PCT Guidelines, see 6.3.8.6.2 Inventive Step.

Scope of search for inventive step

In searching for inventive step, it is necessary to search for documents (or parts of documents) that provide disclosures whose combination would be obvious to a person skilled in the art. The examiner must always consider each document in the search as part of a possible combination of documents which could be cited. A document cannot be eliminated from inventive step considerations as easily as it can be when considering novelty (see 6.1.2.4 Extent of Search and 6.1.8.4 Search Considerations).​​​​​​​

Amended Reasons

Amended Reason Date Amended

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