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Author Topic: Overcoming "mere aggregation of features"/showing "synergistic effect"?  (Read 1067 times)

Robert K S

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EPO Guideline G-VII, 7 states:

Quote
where the claim is merely an "aggregation or juxtaposition of features" and not a true combination, it is enough to show that the individual features are obvious to prove that the aggregation of features does not involve an inventive step (see G VII, 5.2, last paragraph). A set of technical features is regarded as a combination of features if the functional interaction between the features achieves a combined technical effect which is different from, e.g. greater than, the sum of the technical effects of the individual features. In other words, the interactions of the individual features must produce a synergistic effect. If no such synergistic effect exists, there is no more than a mere aggregation of features

When a rejection states that a claim "is merely an aggregation and not a true combination of features" and argues that "a functional feature is missing, which combines the individual features of the claim such that they produce a synergistic effect", what is the appropriate response?  In the particular claim I'm dealing with, there are a set of structural features, each of which is followed by "configured to" and a functional recitation.  The claim gets across what the claimed device does and what it's made of.  What more is the EPO looking for?
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This post is made in the context of professional discussion of general patent law issues and nothing contained herein may be construed as legal advice.

bartmans

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Maybe you should indicate how the structural features are connected and/or how they interplay with each other? A claim to 'a system comprising a steer configured to alter the direction of movement and a brake configured to decrease the speed of movement' would indeed be seen as an aggregation of unrelated features without any joint function and thus no inventive step.
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Euro-Pat-Att

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The wording you quoted is usually present in a rejection based on lack of inventive step. In European practice, if feature 1 is known to produce effect A, and feature 2 is known to produce effect B, the combination of features 1 and 2 is considered obvious, because they solve different, unrelated technical problems.

You need to show that is it not obvious to combine feature 1 and feature 2. Some possibilities are
- there is an synergetic effect mentioned in, or at least easily derivable from the application as filed. This would imply that the skilled person might technically easily combine features 1 and 2, but that he has no incentive to do so.
- it is generally known in the art that feaures 1 and 2 can't be combined because.....  (and supply a document stating this, if you have it)
- the documents proposing feature 1 and feature 2 are mutually exclusive (or at least not simple to combine)
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