1.
The Problem and Solution approach
Example
1 (electrical)
1. This application: The stated problem is to stop ionizing
radiation from affecting transistors in an integrated circuit. Claim 1
reads: an integrated circuit encapsulated in epoxy resin, characterized in
that said resin includes lead oxide powder.
invention
A
B
2.
Prior art A: uses aluminium powder or any other inert powder of
good thermal conductivity in the epoxy resin of an integrated circuit
encapsulation to improve conduction of heat out of the circuit. It says
encapsulation is less than 2 mm thick.
3.
Prior art B: uses a
lead box to screen an electrical circuit board including integrated
circuits from ionizing radiation; it says box may instead be painted with
lead oxide.
4.
Prior art C: shows lead oxide to be inert and to have a better
thermal conductivity than
that of aluminium powder.
Using
the problem and solution approach the following logical chain of argument
results:
1.
The closest prior art: Note that although document A has more
features of claim 1 than does document B, document B is chosen as the
closest prior art since it relates to the same problem as the applicant
sets out to solve (the subjective problem).
2.
The distinguishing features: The difference between claim 1 and
document B is that
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the IC of the claim is encapsulated in epoxy resin including PbO, whereas the IC in document B is enclosed in a box.
3.
The problem: The effect of the epoxy encapsulation compared
with the box is to provide
a more compact device, which is also easier to manufacture. These effects
are not stated in either the application nor in document B, but are
readily deduced by comparing I them. Therefore, the objective problem,
derived from the above effect, is to provide a more compact IC Including a
radiation shield.
4.
The solution: Document A discloses how an agent (in this case a
thermal one) may be provided in an lC in a compact manner, i.e. by
incorporating it in an epoxy encapsulation of the IC.
5.
Conclusion: Therefore, the skilled person, looking for the problem
stated by the applicant (the
subjective problem), would read document B for a solution, and adopt
this as a first step. He would then realize that the resulting device is
rather bulky, and would seek a solution to the second problem (the
objective problem), and find its solution in Document A. Since both
problems and solutions are disclosed in the prior art, no inventive step
is involved in the IC of claim 1 of the application.
The
same result is obtained by using another approach, as follows:
A
skilled person, using the IC of document A, would realize that he could
make it more efficient by replacing the aluminium powder by PbO, according
to the teaching of document C. He would thus make the IC of claim 1 of the
application. By chance, however, he would achieve an extra and unexpected
effect, that of blocking ionizing radiation. However, this is a bonus
effect, not able to support inventive activity, since the prior art
suggests a combination of documents A and C. A one-way street situation is
present since only solution to improving the thermal conductivity is
suggested in the prior art.
Example
2 (mechanical)
1.
Application: This concerns a dining table. The description
describes a prior art table having four legs. The problem with this table
is that it wobbles on an uneven surface. The problem is set out as
follows: "The object of the invention is to provide a dining table
that does not wobble on an uneven surface".
Claim
1 reads: Dining table having a top surface supported by only three legs so
that the center of gravity of the table is located between the three legs.
2.
Prior art 1: This shows a dining table having four legs, it does
not mention the wobbling problem, but is concerned with heat resistance of
the top surface, to prevent damage by hot pots, etc.
3.
Prior art 2: This shows a dining table having four legs, it does
mention the wobbling problem, and the solution disclosed is to make one
leg telescopic.
4.
Prior art 3: This shows a stool for milking cows, having three
legs. It does not mention a wobbling problem.
Using
the problem and solution approach the following logical chain of argument
results:
1.
The closest prior art: This is document 2 which concerns the same
subject-matter as the application and also the same problem, wobbling.
Note that the problem stated by the applicant is the subjective problem,
the wobbling problem in a dinning table having already been solved (in
document 2).
2.
The distinguishing features: The difference between claim 1 and
document 2 is that the table of claim 1 has three legs.
3.
The problem: The effect of the three legs of the invention is that
it is a simpler solution to the solution of a telescopic leg. Therefore,
the objective problem, derived from the above effect, is to provide a
simpler solution to the wobbling problem.
4.
The solution: Document 3 shows that this simple solution was known
in the prior art and is not inventive. Although this document does not
mention anything about wobbling, the skilled person knows that milking
stools are for use on uneven surfaces, and the use of three legs is to
counter wobbling, so this document implicitly discloses the present
solution to the present objective problem.
5.
Conclusion: Therefore, the skilled person, looking for the problem
stated by the applicant (the subjective problem), would read
document 2 for a solution, and adopt this as a first step. He would then
realise that the resulting device is complicated, and would seek a
solution to the second problem (the objective problem), and find its
solution in Document 3. Since both problems and solutions are disclosed in
the prior art, no inventive step is involved in the table of claim 1 of
the application.
Example
3 (chemical)
1. The application:
Claim 1 relates to a reactor for manufacturing urea in which the reactor
walls are made of plates of a corrosion-resistant, hardened alloy of lead
and antimony, wherein the hardened alloy is prepared by quenching a molten
homogeneous mixture of the alloy metals directly after casting, and
rolling the alloy after quenching, the joints between the plates being
made of unhardened alloy of the same composition.
The
problem was to produce urea which is not contaminated by corrosion
products.
2.
Prior art document 1: relates to the preparation of lead antimony
alloys having a lead content of at least 80% by weight and which are
prepared by mixing the molten metals and allowing the cast alloy mixture
to solidify, followed by further processing to form plates.
3.
Prior art document 2: discloses lead antimony alloys obtained by
the method disclosed in claim 1 of the application.
4.
Prior art document 3: discloses the preparation of a pure urea in a
corrosion-resistant reactor wherein the reactor walls are made of rolled
plate of a homogeneous lead antimony alloy. The joints between the plates
are made of pure lead.
Using
the problem and solution approach the following logical chain of argument
results:
1.
The closest prior art is document 3 since it deals with the same
problem as the application, namely the production of the corrosive
chemical urea. The solution found is the same as in the application.
2.
The difference is that the joints between the plates are filled
with lead instead of the same alloy composition.
3.
The objective problem was to produce a reactor having a still
further improved corrosion resistance.
4.
The solution was to use the alloy plates of document 2 and to use
the same alloy for the joints.
5. Conclusion: It could be argued that the skilled worker would look to document 2 to find out how to form an alloy plate suitable for use according to document 3. However, neither of these documents addresses the particular problem of avoiding the problem of contact corrosion at the point of contact between the alloy plates and joints. The advantage of lack of corrosion is found in the higher purity urea which is produced. Therefore, the problem was NOT solved in an obvious way and the application involves an inventive step.
2.
Patentability and industrial applicability
2.1 Examples of medical claims
Example 1
The claim reads: Mammography
apparatus adapted to receive signals representing tissue parameters and
having a computer, characterized in that the computer evaluates the
radiation dose (D) according to the formula
D= d x l x T x k
where d is the thickness of the
tissue, I is the tube current, T is the exposure time, and k is a
calibration factor.
This claim is allowable since it is
not a diagnostic method or a treatment. Nor is it a purely mathematical
method since the numbers involved in the formula are not abstract numbers,
they clearly represent physical values. Also, the formula calculates the
radiation dose for a patient, i.e. it serves a technical purpose.
Even if the only inventive step is
in the mathematical evaluation of D, the apparatus as a whole is
technical. Here, a distinction should made between the "idea
underlying the invention", which in the above case is a mathematical
method, and the "contribution that the invention makes to the
art", which is a better dosing of the radiation, and is clearly
technical.
Example 2
The claim reads "A method of
measuring blood flow in animal tissue, comprising injecting radioactive
micro spheres into the blood of the animal, sacrificing the animal, and
counting the number of micro spheres in a given sample of tissue."
The above claim includes the step
of injecting micro spheres into the body, and killing the animal, so that
"blood is spilt" (see the definition of surgery in Chapter IV,
4.3).
Nevertheless, the above claim is
allowable since the purpose of the claim is not to heal the animal, there
is the opposite step of killing the animal. This method is for
experimental purposes and not concerned with the health of the animal.
Example 3
The claim reads "A method of
making an X-ray image of a living body, comprising placing the body
between source providing a fan-shaped X-ray beam and a detector consisting
of a two-dimensional array of detector elements, characterized in that a
slit scans across the fan-shaped X-ray beam and corresponding detector
elements are simultaneously energized."
This claim is allowable since it
does not result by itself in the diagnosis, even though it serves to
provide interim results. For such a method to be excluded as a diagnostic
i)
The result must immediately provide a diagnosis and not
merely interim results.
ii) The method can only be used by a medical practitioner. In the
above case the method can be used by a laboratory technician, a doctor is
not necessary.
iii)
Both the examination and the establishing of symptoms must be
carried out on the living body. In this case only the examination is
carried out (by a laboratory technician) on the living body, the actual
diagnosis is done remotely by the doctor.
Moreover, the object of the
invention is to provide a sharper X-ray image so the technical problem in
the application is clearly technical, as is the solution.
Example 4
The claim reads "A method of
improving bodily appearance of a mammal which comprises orally
administering naltrexone in a dosage effective to reduce appetite, and
repeating the dosage until a cosmetically beneficial loss of weight has
occurred."
The wording of the claim clearly
directs the method to a cosmetic treatment ("improving bodily
appearance", "cosmetically beneficial loss of weight").
Moreover, a loss of weight is not inevitably linked to an increase of
health, so this claim is allowable.
Example 5
The claim reads "A method of
cleaning plaque from human teeth by applying thereto a non-oxidizing
aqueous composition consisting of lanthanum in the form of a water-soluble
salt."
Although the removal of plaque from
teeth improves their appearance and is cosmetic, there inevitably follows
improved health since plaque causes tooth decay, so a prophylactic
treatment is implicit in this method, and it is not allowable.
Further examples
are given in VII Examples, Part 5: "Chemical Problems".
2.2 Examples of computer-related
inventions
Example 1
see example 1 above in examples of medical claims.
Example 2
Claim 1 reads "A data
processing system having a plurality of interconnected data
Remarks:
This claim looks like a business transaction since it is basically a
system in
which, for example, a customer inputs a request
into a keyboard for drawing money out of a cash machine. However, the
system is technical subject-matter since it relates to how computer
operation is affected, i.e. two or more computers may be connected
together to complete the transaction. Therefore, this system is patentable.
Example 3
Claim 1 reads "X-ray apparatus
having several X-ray tubes, characterized by a computer which stores tube
rating data and uses this to set exposure parameters for each tube, such
that optimum exposure is obtained for each tube without overloading of
anyone of them".
Remarks:
The apparatus includes the known combination of an X-ray apparatus and a computer
which stores tube data and software for operating X-ray tubes.
However, the new feature is the program that
supervises the operation of the X-ray tubes so as to optimize performance
of each tube as it ages. This is a technical result so the claim is
patentable.
Example 4
Claim 1 reads "A system for
automatically abstracting documents and storing the result, comprising a
dictionary memory for storing commonly used words, means for reading the
document and comparing the words in it with the commonly used words
stored, and selecting only those words not commonly used, and storing the
selected words",
Remarks:
There is no technical result produced here, only a list of selected words,
which is in the nature of intellectual activity only, so this claim is not
patentable.
In all the above examples the only
difference from the prior art lay in the computer
2.3
Other examples
Example 1
Claim 1 reads "An electrical
signal for application to the deflection plates of a particle
Firstly, it is noted that the claim
is a device claim but it relates to an intangible entity, i.e. an
electrical signal. Secondly, it is a transient entity, since the signal is
a pulse, i.e. it is generated only at the instance it is needed. However,
both the above points are not a bar to patentability, since the signal has
a technical character, it enables the separation of charged particles in a
particular manner, and the claim is allowable.
Example 2
A claim reads "Device for
healing living bodies by improving cosmic harmony with the
In such a case an objection should
be raised that there is a doubt that there is a direct relationship
between the technical problem and Its solution. The stated technical
problem is that bodies should be healed "by improving cosmic
harmony", but there is a serious doubt that the stated construction
can cause any healing, i.e. that it really is a technical solution. The
applicant should be requested to submit his invention to a neutral
authority or government agency to carry out tests proving that the device
has healing effects. It is not sufficient that the applicant submits
affidavits from private people or doctors or clinics. Only if these tests
prove that the device works as stated by the applicant can a patent be
granted.
Example 3
The claim reads: "A method of
selecting the correct dosage of a drug for a patient,
In this case the indications on the
tape is a presentation of information, i.e. excluded from patentability.
Thus, the claim contains a mixture of technical and non-technical
features. In order to decide whether the invention as a whole provides a
technical contribution to the prior art, the prior art must first be
considered. This is a tape having markings along its length, the markings
having indications of the amount of food to be given to a child.
To argue, at this stage, that the
only difference between the known tape and the claimed tape is the
information that the markings give (in one case the drug dosage and in the
other case the amount of food), so the invention is merely a presentation
of information, would be wrong, since the argument does not adequately
evaluate the relationship between the markings and the tape the carries
the markings. In other words it does not take the teaching of the claim as
a whole.
The new markings make the tape into
a new gauge for directly measuring dosage. It is like a pressure gauge in
which the markings of pressure are replaced by markings that make the
gauge suitable for use as an altimeter. The claim is, therefore,
patentable.
Further examples
are given below in VII Examples, Part 5 "Chemical Problems".
3.
Clarity
Example 1
The
claim reads "A device for draining fluids from the stomach,
comprising an inert plastics tube having a smooth outer wall and a rounded
leading end having an aperture, and electrodes embedded in the outer wall
along its length, characterized in that the length of the tube is such
that when it is inserted into the mouth and down into the esophagus, it
reaches the stomach".
Comments:
The characterizing feature is indeterminate and the scope of the claim
isunclear. The distance between the mouth and the stomach depends on the
age, sex,racial type, etc. of a person, so it is not well defined.
Moreover, the claim does not limit the device for use with humans, it
could be used with giraffes, in which case the possible range of lengths
is enormous and the claim becomes even more unclear.
Example 2
The
claim reads "Apparatus for receiving a credit card and reading it,
comprising a housing for insertion in a recess in a wall and having a
front opening having a size for receiving the card, the front wall of the
housing also including a keyboard for keying in passwords, numbers, etc.,
and the inside of the housing including a microprocessor …….”
Comments:
The claim is directed to apparatus for reading credit cards, and does
notinclude the card itself. However, one feature of the claim (size of the
front opening) is defined with respect to the card. This is
allowable since credit cards have standard sizes. The situation might be
different if the opening were to be defined with respect to a coin, for
example, since coins have different shapes and sizes.
Example 3
The
claim reads "A bracket for hanging a picture, comprising a hook
having two projections, wherein the bracket is secured in an opening in a
wall by rotating it through a given angle, inserting one projection into
the opening, rotating it back to the original orientation, and lowering
it".
Comments:
The claim attempts to define the constructional features by reference
tomanner in which the bracket is secured to the opening in the wall, and
is not clear.
Example 4
The
claim reads "Apparatus for recording on or reproducing from a laser
disk, wherein a semiconductor laser beam intensity is varied between a
high value for recording and a low value for reproducing, characterized in
that the laser wavelength is kept constant as the intensity is
varied".
Comments:
The claim is unclear since it sets out the desired result rather than
technical features that cause the result. It would be necessary to define
those parts of the apparatus that detect wavelength variations and a
feedback loop for maintaining the wavelength constant.
Example 5
The
claim reads "Apparatus for recording on or reproducing from a laser
disk, wherein a semiconductor laser beam intensity is varied between a
high value for recording and a low value for reproducing, characterized in
that the laser wavelength is kept constant as the intensity is varied, or
the variation from high to low value is performed by a high speed switch,
or the laser temperature is kept constant as the intensity changes".
Comments:
The different options in the claim are not fairly exchangeable and lead to
confusion as to the scope of the claim.
Example 6
The
claim reads "Apparatus for pacing the heart comprising a pulse
generator, wherein natural heart beats are detected, and if one or more
natural heartbeats is missing, a detector measures blood pressure and if
this is below a given threshold a stimulating pulse is issued".
Comments: This claim not only defines the desired result instead of technical features that give the result, but is further objectionable since it relates to apparatus but sets out method steps. so its category is also unclear.
The
following examples illustrate how to apply the principle of unity of
invention in particular cases.
4.1
Claims in different categories
Example 1
Claims:
1.
A process for manufacturing chemical substance X.
2.
Substance X.
3.
The use of substance X as an insecticide.
Prior
art:
(i)
Situation 1: Substance X is novel and inventive.
(ii)
Situation 2: The search has revealed that the substance X lacks novelty
with regard to the state of the art.
Comments:
(i) Situation 1: The
feature common to all of claims 1 to 3 is the substance X. This common
feature is a special technical feature, since it makes a contribution over
the prior art. Thus, there is a special technical feature common to all
the claims. Consequently unity exists between the inventions defined in
claims 1, 2 and 3.
(ii)
Situation 2: Claim 2 fails for lack of novelty and must be deleted. The
feature common to the remaining claims 1 and 3 is the substance X.
However, the substance X is not a special technical feature, because it
makes no contribution over the prior art. Thus, there is no special
technical feature common to claims 1 and 3. Consequently there is lack of
unity "a posteriori" between claims 1 and 3.
Example 2
Claims:
1.
A process of manufacture comprising steps A and B.
2.
Apparatus specifically designed for carrying out step A.
3.
Apparatus specifically designed for carrying out step B.
Prior
art:
The
search has revealed no relevant prior art document related to the process
of claim 1.
Comments:
Steps A and B respectively are two special technical features which define
contributions over the prior art. Unity exists between claims 1 and 2, or
between claims 1 and 3. There is no unity, however, between claims 2 and
3, since neither the same nor a corresponding special technical feature is
common to both claims 2 and 3, and one of these claims must be cancelled.
Example 3
Claims:
- A process for painting an article in which the paint contains a rust inhibiting substance X, said process including the steps of atomizing the paint using compressed air, electrostatically charging the atomized paint using an electrode arrangement A, and directing the paint onto the article.
2.
A paint containing substance X.
3.
A paint spraying apparatus including electrode arrangement A.
Prior
art:
The
paint containing substance X is new and inventive. The electrode
arrangement A is also new and inventive. However, it is known to paint an
article by atomizing the paint using compressed air, and electrostatically
charging the atomized paint, and directing the paint onto the article.
Comments:
The special technical features of claim 1 are (i) to use a paint
containing
substance
X, and (ii) to use the electrode arrangement A. Special technical feature
(i) is to be found in claim 2, such that there is a technical relationship
between the inventions of, and
thus unity between, claims 1 and 2. Special technical feature (ii) is to
be found in claim 3, such that there is a technical relationship between
the inventions of, and thus unity between, claims 1 and 3. The special
technical feature (i) of claim 2 is neither the same nor corresponding to
the special technical feature (ii) of claim 3. Thus, there is lack of
unity between claims 2 and 3 and one of these claims must be cancelled.
Example 4
Claims:
1.
Use of a family of compounds represented by the general formula X as
insecticides.
2.
Compound X1 belonging to family X.
Prior
art:
Compound
X1 is novel and inventive. Certain other members of the family of
compounds X are, however, comprised in the prior art. There is no
disclosure of an insecticidal activity for these known compounds.
Comments:
The special technical feature in claim 1 is the insecticidal use of the
structure. Provided that X1 has an insecticidal activity unity is present.
Example 5
Claims:
1.
A process for treating textiles comprising spraying the material with a
particular coating composition under special conditions (e.g., as to
temperature, irradiation).
2.
A textile material coated according to the process of claim 1.
3.
A spraying machine for use in the process of claim 1 and characterized by
a new nozzle arrangement providing a better distribution of the
composition being sprayed.
Prior
art:
A
prior art document discloses a process for treating textiles with a
coating. The process according to claim 1 is novel.
Comments:
In. respect of the prior art, the textile material of claim 2 exhibits
unexpected properties. In claim 1 the use of special process conditions
corresponding to what is made necessary by the choice of the particular
coating is the special technical feature which makes the contribution over
the prior art. This special technical feature corresponds to the
limitation of the textile product with its unexpected properties according
to claim 2. Thus, unity exists between claims 1 and 2. The spraying
machine in claim 3 does not involve any feature corresponding to the above
identified special technical feature. Therefore unity does not exist
between claims 1 and 3, nor between claims 2 and 3, so Claim 3 should be
cancelled.
Example 6
Claims:
1.
A chair (A), coated with layer X.
2.
A chair according to claim 1, made of wood.
3.
A process for distributing the layer X.
Prior
art:
A
prior art document discloses chair (A); a further document discloses layer
X, but not in the field of furniture. The application of layer X to a
chair (A) provides a special effect, e.g. protective qualities, for wooden
furniture, not produced for other objects.
Comments:
The combination of the features A and X in claim 1 is not obvious, since a
special effect is achieved. Thus said combination is a special technical
feature making a contribution over the prior art. The same special
technical feature IS automatically contained in the dependent claim 2.
Therefore unity exists between claims 1 and 2. There is no unity, however,
between claims 1 and 3, since claim 3 does not include said special
technical feature, i.e. the combination of the features A and X.
Example 7
Claims:
1.
A fuel burner with tangential fuel inlets into a mixing chamber.
2.
A process for making a fuel burner including the step of forming
tangential fuel inlets into a mixing chamber.
3.
A process for making a fuel burner, including a casting step.
4.
An apparatus for carrying out a process for making a fuel burner,
including feature X resulting in the formation of tangential fuel inlets.
5.
An apparatus for carrying out a process for making a fuel burner,
including a protective housing.
6.
A process of manufacturing carbon black, including the step of
tangentially introducing fuel into a mixing chamber of a fuel burner.
Prior
art:
A
prior art document discloses a fuel burner with non-tangential fuel inlets
and a mixing chamber. Tangential fuel inlets are neither known nor obvious
from the relevant prior art.
Comments:
The feature of the tangential fuel inlets in claim I is the special
technical feature which makes the contribution over the prior art. This
special technical feature is common to claims 1, 2, 4 and 6. Thus, unity
exists between these claims. Claims 3 and 5 do not include the same or a
corresponding special technical feature, so that they lack unity with
claims 1, 2, 4 and 6, and with one another.
Example 8
Claims:
1.
A high corrosion resistant and high strength ferritic stainless steel
strip consisting of, in percent by weight: Ni = 2 -5; Cr = 15 -19; Mo = 1
-2; and the balance Fe, having a thickness of between 0.5 and 2.0 mm and a
0.2% yield strength in excess of 50 kg/mm2.
2.
A method of producing a high corrosion resistant and high strength
ferritic stainless r~ steel strip consisting of, in percent by weight: Ni
= 2 -5; Cr = 15 -19; Mo = 1 -2; and the balance Fe, comprising the steps
of: hot rolling to a thickness between 2.0 and 5.0 mm; annealing the hot
rolled strip at 800-1000oC
under non.-oxidizing conditions; cold rolling the strip to a thickness of
between 0.5 and 2.0 mm; and final annealing the cold rolled strip at :'
between 1120 and 1200oC for a period of 2 -5 minutes.
Prior
art:
Stainless
steel strips having a 0.2 % yield strength in excess of 50 kg/mm2 are
novel and inventive.
Comments:
The special technical feature in the product claim is the 0.2% yield
strength in excess of 50 kg/mm2. The process steps in claim 2 inherently
produce a ferritic stainless steel with a 0.2% yield strength in excess of
50 kg/mm2. Even if this feature is not mentioned in claim 2, it is an
inevitable result of carrying out the process of claim 2, and this fact is
clearly disclosed in the description. Therefore said process steps are the
special technical feature which correspond to the limitation in the
product claim directed to the same ferritic stainless steel with the
claimed strength characteristics. Therefore unity is present between
claims 1 and 2.
4.2 Claims in the same category
4.2.1
General examples
Example 9
Claims:
1.
Electrical plug having a plurality of pins, characterized in that said
pins are of hexagonal cross-section of diameter d.
2.
Electrical socket having a plurality of elongate bores defining female
contact members, characterized in that said bores are of hexagonal
cross-section of diameter d.
Prior
art:
A
prior art document discloses an electrical plug having round pins, and an
electrical socket having round bores.
Comments:
The special technical feature in claim 1 is the pins of hexagonal
cross-section. Claim 2 involves a corresponding feature to the special
technical feature in claim 1, since the sockets are of complementary
hexagonal form and equal diameter to the pins. Thus, a technical
relationship between the two inventions exists. Consequently unity of
invention is present.
Example 10
Claims:
1.
Electrical plug having at least four pins of oval cross-section,
characterized in that said pins are split pins, the joined ends of which
are mounted in the plug body.
2.
Electrical socket having at least four socket bores of oval cross-section
defining female contact members, characterized in that said contact
members are held in the socket body by adhesive.
Prior
art:
A
prior art document discloses an electrical plug having two pins of oval
cross-section, and a corresponding socket device. A second prior art
document discloses a plug having four pins and a socket with four socket
bores.
Comments:
The special technical features of claim 1 are the split pins, the joined
ends of which are mounted within the plug body (i.e. the only inventive
contribution as compared with the prior art as represented by the
teachings of the two prior art documents. None of the special technical
features of claim 1, or features corresponding thereto, can be found in
claim 2, such that there is no technical relationship between the two
inventions. Therefore, unity is lacking between claims 1 and 2.
Note:
In this example, an incorrect approach would consist in using only one
prior art
document to determine
the special technical feature of claim 1. If, for example, only the first
document was considered, then the following situation would arise: The
special technical features of claim 1 are: at least four pins, which are
split pins, the joined ends of which are mounted within the plug body. The
special technical feature of the four pins of claim 1 corresponds to the
four socket bores of claim 2. This would lead to the (wrong) conclusion
that a technical relationship and, thus, unity of invention exists between
claims 1 and 2.
Example 11
Claims:
1.
Transmitter provided with time axis expander for video signals.
2.
Receiver provided with time axis compressor for video signals received.
3.
Transmission equipment for video signals comprising a transmitter provided
with time axis expander for video signals and a receiver provided with
time axis compressor for video signals received.
Prior
art: There is no disclosure or hint in the prior art of the use of time
axis expansion/compression in this field.
Comments:
The special technical feature in claim 1 is the time axis expander. The
special technical feature in claim 2 is the time axis compressor, which is
a corresponding technical feature to that of claim 1. Claim 3 has both
these special technical features. Thus all three claims are unitary.
Example 12
Claims:
1.
Conveyor belt X with feature A.
2.
Conveyor belt Y with feature B.
3.
Conveyor belt Z with features A + B.
Prior
art:
In
the prior art conveyor belts X, Y and Z without features A or B are
disclosed.
Comments:
Feature A in claim 1 is the special technical feature which defines the contribution over the prior art. This feature is not related with
the feature B in claim 2. Unity of invention exists between claims 1 and
3, but not between claims 1 and 2. Also there is unity between claims 2
and 3.
Example 13
Claims:
1.
Control circuit for a d.c. motor, said circuit having feature A.
2.
Control circuit for a d.c. motor, said circuit having feature B.
3.
A vehicle including a d.c. motor with a control circuit having feature A.
4.
A vehicle including a d.c. motor with a control circuit having feature B.
Prior
art:
Control
circuits for d.c. motors are well-known, but features A and B are
individually new and inventive. However, features A and B are completely
unrelated.
Comments:
The special technical feature in claim I is feature A, which is present in
claim 3, such that unity exists with claim 3, but not with claims 2 and 4.
The special technical feature in claim 2 is feature B. which is present in
claim 4, such that unity exists with claim 4, but not with claims 1 and 3.
Example 14
Claims:
1.
A display comprising a two-dimensional array of groups (A) of white light
sources, each group (A) of sources being associated with a respective set
(B) of differently coloured filters.
2.
A display according to claim I in which the filters in each set (B) are
red, blue and green of particular transmission wavelengths (C).
3.
A display according to claim 1 in which the light sources are filament
lamps (0).
Prior
art:
(i)
Situation 1: A prior art document discloses a display comprising a
two-dimensional
array
of white light sources. Claim 1 is novel and inventive in the light of
said prior art
document.
(ii)
Situation 2: A prior art document discloses a display comprising a
two-dimensional array of white light sources. A second prior art document
discloses a linear array of groups of white light sources, each group of
sources being associated with a respective set of differently coloured
filters.
Claim
1 is not inventive in the light of said two prior teachings.
Comments:
(i)
Situation 1: Claims 2 and 3 are properly drafted dependent claims defining
detail
features
of the subject-matter of claim 1. Therefore there is automatically unity
of invention between claims 1, 2 and 3.
(ii)
Situation 2: Claim 1 must be deleted for lack of inventive step. The
remaining claims 2 and 3 must now be treated as independent claims to
determine whether or not there is unity of invention. The special
technical feature (c) in claim 2 is that the filters in each group of
light sources are red, blue and green of particular transmission
wavelengths. This special technical feature, or features corresponding
thereto, is not to be found in claim 3.
Therefore,
unity is lacking a posterior between claims 2 and 3.
Example 15
Claims:
1.
A filament for an electric lamp, said filament having a special
construction A.
2.
An electric lamp B comprising a filament having a special construction A.
3.
A searchlight comprising a lamp B having a filament having a special
construction A, said lamp being mounted by a swivel arrangement C.
Prior
art:
A
prior art document discloses a filament for a lamp, there being no
disclosure or hint of the special construction A.
Comments:
The special technical feature in claim 1 is the special construction A for
the filament, which is present in all three claims, thereby providing a
special technical feature needed to fulfil the requirements of unity of
invention.
Example 16
Claims:
1.
A marking device for marking animals, comprising a disc-shaped element
with a stem extending normally therefrom, the tip of which is designed to
be driven through a body portion of the animal to be marked, and a
securing disc element to be fastened to the protruding tip of the stem on
the other side of the body portion.
2.
An apparatus for applying the marking device of claim 1, constructed as a
pneumatically actuated gun for driving the stem of the disc-shaped element
through the skin, and provided with a supporting surface adapted for
taking up a securing disc element, to be placed at the other side of the
body portion in question of the animal to be marked.
Prior
art:
A
prior art document discloses a marking device for animals. However, no
disc-shaped element with a stem and a securing disc element is disclosed
or hinted at in the prior art.
Comments:
The special technical feature in claim 1 which makes the contribution over
the prior art is the disc-shaped element with a stem and a securing disc
element to be fastened to the tip of the stem. The corresponding special
technical feature in claim 2 is the pneumatically actuated gun for driving
the marking device through the body part, and the supporting surface for
the securing disc element. Hence unity exists between claims 1 and 2.
Example 17
Claims:
1.
Compound A.
2.
An insecticide composition comprising compound A and a carrier.
Prior
art
In
the light of the prior art compound A is novel and inventive.
Comments:
Unity exists between claims 1 and 2. The special technical feature common
to both claims is compound A.
Example 18
Claims:
1.
An insecticide composition comprising a compound of the general formula A
and a
carrier.
[Formula A comprises various Compounds a1, a2, ...]
2.
Compound a1.
Prior
art:
Certain
specific compounds covered by the general formula A are known, but not as
insecticides.
The compound a1 is novel and inventive.
Comments:
All compounds of general formula A are not claimed in claim 2 as, for
example, some of them
lack novelty. Nevertheless there is still unity between the subject-matter
of claims 1 and 2, provided a1 possesses insecticidal activity which is
the special technical feature for the compounds of general formula A in
claim 1.
Example 19
Claims:
1.
Protein X.
2.
DNA sequence encoding protein X.
Prior
art:
In
the light of the prior art protein X is novel and inventive.
Comments:
Expression of the DNA sequence in a host results in the production of a
protein which is determined by the DNA sequence. The protein and the DNA
sequence exhibit corresponding special technical features. Unity exists
between claims 1 and 2.
4.2.2 Examples concerning intermediate and final products
Example 20
Claims:
1.
Amorphous polymer A.
2.
Crystalline polymer A.
Prior
art:
The
polymer A is novel.
Comments:
In this example a film of the amorphous polymer A is stretched to make it crystalline. Here unity exists because there is an
intermediate/final product relation in that amorphous polymer A is used as
a starting product to prepare crystalline polymer A. For purposes of
further illustration, assume that the polymer A in this example is a
specific polyisoprene. Here the intermediate, amorphous polyisoprene, and
the final product, crystalline polyisoprene, have the same chemical
structure.
Example 21
Claims:
1.
Novel compound having structure A. [Intermediate]
2.
Product prepared by reacting A with a substance X.
[Final
product with unknown structure]
Prior
art:
No
relevant prior art document was found in the search.
Comments:
In this example the structure of the product of claim 2 (the final
product) is not known. Unity exists if there is evidence which would lead
one to conclude that the , characteristic of the final product which is
the inventive feature in this case is due to the intermediate. For
example, the purpose of using the intermediate is to modify certain
properties of the final product. The evidence may be in the form of test
data in the specification showing the effect of the intermediate on the
final product. If no such .evidence exists then there is no unity on the
basis of an intermediate-final product relationship.
Example 22
Claims:
1.
Reaction product of A and B. (Intermediate with unknown structure).
2.
Product prepared by reacting the reaction product of A and B with
substances X and Y. (Final product with unknown structure).
Prior
art:
No
relevant prior art document was found in the search.
Comments:
In this example the structures of the products of claim 1 (the
intermediate) and claim 2 (the final product) are unknown. Unity exists if
there is evidence which would lead one to conclude that the characteristic
of the final product which is the special technical feature in the case is
due to the intermediate. The evidence may be in the form of test data in
the specification showing the effect of the intermediate on the final
product. If no such evidence exists then there is no unity on the basis of
an intermediate-final product relationship.
4.3 Alternatives in a single claim I
Markush practice
Example
23
-common structure
Claim
1.
Pharmaceutical compounds for enhancing the capacity of the blood to absorb
oxygen, of the formula
|
|
wherein R1 is selected from the ~roup consisting of phenol, pyridyl, thiazolyl, triazinyl, alkylthio, alkoxy and methyl; R2 -R are methyl, benzyl or phenyl.
Prior
art:
For
the purpose of this example it is assumed that the search reveals that no
indolyl derivatives are known which possess CI pharmaceutical activity
and, in particular, the property of enhancing the capacity of the blood to
absorb oxygen. The claimed compounds are novel and Inventive.
Comments: Claim 1 defines various alternatives of individual chemical compounds. The indolyl moiety is the significant structural element which is shared by all of these alternatives. Since all the claimed compounds are alleged to exhibit the same pharmaceutical activity (i.e. enhancing the capacity of the blood to absorb oxygen), the indolyl moiety is the special technical feature. This special technical feature is common to all alternatives covered by claim 1. Thus, claim 1 is unitary.
5
Chemical Problems
The
following text is designed to help substantive examiners in dealing with
problems that arise when considering chemical applications. The examples
cover different types of subjects such as patentability, medical methods,
novelty, inventive step, etc., their common theme being that they are in
the chemical area.
The
following definitions apply:
Compound
-a single chemical substance.
Composition
-a mixture of compounds (N.B. usually containing one or more active
compounds, which do not react chemically with one another).
Product
-a compound, a composition or a reaction mixture (N.B. such products may
be obtained by chemical or physical process or by extraction).
Index of examples
1.
Compounds and compositions having a special scent or flavour
2.
Unstable compounds
3.
"Intermediate products"
5.2
Inventions relating to surgery. therapy or diagnostic methods
4.
Allowable claims
5.
Known physiological effect
6.
Known pharmaceutical use
7.
Second medical indication
8.
Allowable "second medical indication" claims
9.
Synergistic effects (kit of parts)
10.
Prevention or treatment of parasitic infestations
5.3 Novelty
11.
Limitation of a claim concerning a family of chemical compounds lacking
novelty
12.
Novelty in connection with composition ranges
13.
Novelty of chemical compounds
14.
Novelty of stereoisomers