Trial and Appeal Practitioners Study Group Report 2024 — Theme 2 (Chemistry 1)
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Article type: Reports and activities
Categories: Patents
Topics: Inventive step, Numerical limitations and parameters, Examination and appeal practice
First published on this website: 2026-10-16
Display and classification checked: 2026-10-17
Trial and Appeal Practitioners Study Group Report 2024 — Theme 2 (Chemistry 1)
[Inventive step in parameter and numerically limited inventions]
When can a numerical range not expressly disclosed in a cited document be held readily conceivable?
• Commonality of the technical fields and problems of the invention at issue and the primary cited invention.
→ When preparing a specification, the problem considered by the inventor is not based on all prior art. In practice, the inventor sets the invention’s problem by considering common general knowledge within the inventor’s awareness and contributions or effects relative to documents found in a pre-filing search.
Accordingly, identifying the problem from the “Problem to be solved by the invention” sections of the specification at issue and the primary cited invention’s specification also accords with actual practice.
Where the problem is merely common general knowledge, industry-association technical journals and standards are useful for showing that it is self-evident to a person skilled in the art.
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2026-10-16: The AMEBLO source was first published on this website.
2026-10-17: Added classification, topic tags, article information, translation navigation, related articles, consultation guidance, and SEO. The original article text was not changed.
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