9.1. Assessment of inventive step in the case of mixed-type inventions

The case law of the boards of appeal on the assessment of inventive step in cases where the invention consisted of a mix of technical and non-technical features is as follows: It is legitimate to have a mix of technical and "non-technical" features appearing in a claim, in which the non-technical features may even form a dominating part of the claimed subject matter. Novelty and inventive step, however, can be based only on technical features, which thus have to be clearly defined in the claim (T 641/00, OJ 2003, 352; T 154/04, OJ 2008, 46; G 3/08 date: 2010-05-12, OJ 2011, 10; T 116/06; T 1769/10; T 209/91; as similarly held in the earlier T 26/86).

Inventive step can be based only on technical features. Non-technical features, to the extent that they do not interact with the technical subject-matter of the claim for solving a technical problem, i.e. non-technical features "as such", do not provide a technical contribution to the prior art and are thus ignored in assessing novelty and inventive step (T 641/00, OJ 2003, 352; T 154/04, OJ 2008, 46). When assessing the inventive step of such a mixed-type invention, all those features which contribute to the technical character of the invention are taken into account. These also include the features which, when taken in isolation, are non-technical, but do, in the context of the invention, contribute to producing a technical effect serving a technical purpose, thereby contributing to the technical character of the invention. However, features which do not contribute to the technical character of the invention cannot support the presence of an inventive step (T 641/00, OJ 2003, 352).