T 0756/06: Technical and non-technical features in one claim

This case concerns the way the EPO deals with claims which contain both technical and non-technical features and provides a nice summary of the case law. The Board reasons (R 4 and 5):

It is established jurisprudence that such claims are inventions in the sense of Article 52(1) and (2) EPC, but that the non-technical features cannot support the presence of inventive step (Article 56 EPC). Technical features are generally considered to be those that produce a technical effect.

In practice in such cases, one of two approaches is generally followed. 

In the first approach, e.g. apparent from T 931/95 [..] there is an initial analysis of the technical character of the features of the claim and then a consideration of the inventive step of only those features. 
This approach is typically used for inventions that are essentially business methods running on more or less notoriously known computer hardware. 

The second approach, e.g. used in T 641/00 [..] is a more conventional application of the problem and solution approach where the differences with respect to the closest prior art are determined and only those that  contribute to the technical character are considered for inventive step. 
This approach may be more appropriate where the technical part is more substantial and/or relevant prior art exists. It has the advantage that any non-technical feature known from this prior art will not appear as a difference and does not need to be considered in the subsequent steps, thus sparing the step of judging whether it makes a technical  contribution. Furthermore, this approach is less abstract since the claimed features can be analysed against concrete prior art.


You may want to print this part of the decision and take it with you to the C exam ....